Greg:

I don't regularly follow the thread here, but I will respond to your post at your request.

I connect Russell with Chuck in August of 1988 and became involved with the project in December of 1988, so I was around for almost the entire time.

Attorneys don't work unless their bills are paid fairly currently, and it was about 2 years IIRC after the start of the project that Nanotronics started putting out cash. So, someone paid the original expenses, but those paled in comparison to the later expenses paid by PSC. Patent expenses were second only to labor costs at PSC. The original expenses consisted only of the research and filing the original disclosure and claims. All possible delays in the patent office were made to defer the cash outlay on the patents, so the vast majority of the cost was paid by Patriot, with me as the technical author on almost all of the claim sets.

You are correct that all of the patents being licensed were of the original ideas of Chuck and Russel. Only a small percentage of patents make money. Patriot's percentage is quite high.

PSC always knew that they did not have an undivided interest in the patents, but there was no knowledge early on that they would be valuable. In abut 1995 or 1996 I was involved in a meeting with Chuck, and the CEO of PSC, at iTV to discuss ownership and inventorship of the patents. The meeting was fairly brief and got nowhere as at the time Chuck had little interest in the patents but claimed IIRC that iTV controlled them, but he agreed to cooperate in their prosecution. I don't think that the PSC CEO wanted to look too interested, and we had no idea what they might be worth at the time. It was more a matter of tying up loose ends. I suspect that later claiming PSC owned all the rights was simply legal maneuvering by PSC's attorneys to get Chuck to give up his rights.

Greg's information is essentially correct. Fish and Chuck became acquainted some time before I became involved in August of 1988. I renewed their contact at that time when Russell called me looking to see what Chuck had been up to. Initially, Fish had a handshake deal with OKI Semiconductor to produce the first prototypes of ShBoom at OKI's expense for a first right of refusal to license the chip. No one was getting paid. Fish preferred royalty deals where people got paid when there was cash flow. These types of loose and unusual deals where Fish's trademark and contributed significantly to the number of lawsuits that later resulted.

A single patent disclosure was filed by Fish with numerous initial claims. As is typical, both inventors were on the mass of claims. The patent office decided that there were 10 separate inventions and divided the single set of claims into 10 division sets of claims. This gave both inventors an undivided interest in all the inventions. In practical terms this means that both inventors could license any patent that resulted.

Fish and Chuck went their separate ways and Fish found Helmut Falk to fund further development through the creation of Nanotronics, Inc. At this point people started getting some pay (about 2 years into the project), but Chuck was not involved or paid.

Fish sold all of his interest in the patents to Nanotronics. Nanotronics was later was acquired by Patriot. Thus Patriot owned all of Fish's rights to the patents. Since completing patent work is expensive, at each step Nanotronics and then Patriot filed paperwork and paid the minimal fees allowed to delay processing the patents with the hope that money would be available to afford them. Nanotronics and Patriot paid all the costs of creating the patents. I got involved in the patents when the first came up and had to be processed and eventually wrote all the claim sets and patents after that, with the help of Woody Higgins (the patent attorney) to ensure they were in proper patent-speak (about 1995 to the end of 2000).

Chuck was specifically uninterested in the patents but cooperated when paperwork needed to be signed. Patents are a huge time sink until you know that they are valuable. However, while Fish had noted who he believed invented what, this was never approved by Chuck. Once the original claim set was divided by the patent office the individual inventorship should have been decided and filed with the patent office, but Patriot management did not proceed to do so. This, of course, created a mess later when it was found that some of the inventions were quite valuable. Who invented them and thus owned the invention and had the rights as the inventor? Eventually the MMP licensing arrangement settled this issue until the recent problems.

George Shaw