DULUTH — Gene Luoma, a 77-year-old inventor, thought he would be pretty well set by this time in his career. But his recent difficulties defending a patent have proven a financial game-changer, and his case soon could be headed to the highest court in the land.
Luoma is one of about three-dozen patent holders recently named by U.S. Patent and Trademark Office Director Andrei Iancu in a writ of certiorari submitted to the U.S. Supreme Court, asking it to overturn an earlier ruling by a lower court, the U.S. Court of Appeals for the Federal Circuit.
That lower court had found that Luoma and others who had their patents invalidated deserved another chance to have their cases heard, due to flaws in the way that administrative patent judges had been appointed.
At least four of the Supreme Court's nine justices would need to agree to hear the case before it could advance, but Josh Malone, an inventor and patent rights advocate, likes the chances that the court will weigh in definitively on what has become a very messy situation.
"The patent court has basically put all these cases on pause, and the appellate court now put all these cases on pause. So, I think it's almost a guarantee the Supreme Court is going to have to take the case," Malone said. "It's got more potential than anything I've seen in my time."
Answers could be slow to come, however, as Malone noted cases such as the one recently filed often take about 1½ years to resolve.
Luoma's break-through invention was the Zip-It, a plastic barbed drain-cleaning device that he devised after struggling to keep his tub draining freely with a long-haired daughter in the house. He tried all sorts of chemical drain-cleaning products, bent hangers — you name it.
Then, one day, his eyes fell on a beat-up old plastic sled. A short while later, he was cutting a jagged-edged strip out of it. He took it into the bathroom, pushed it down the drain and pulled it out, retrieving a clump of thick hair he likened to a dead rat.
Luoma refined the design, researched whether any similar products were out there, and finding none, he filed for a patent in 2000. The following year, he trademarked the "Zip-It" name.
As he began to show his injection-molded, drain-cleaning device around, it quickly drew attention, and in December 2000, Luoma signed a licensing agreement with Cobra Products Inc./BrassCraft Manufacturing Co., a subsidiary of MASCO.
For the next several years, Zip-Its sold like crazy. But one decade and about 12 million units later, another company, GT Water Products Inc., introduced a product of uncannily similar design.
Change of fortune
Luoma wasn't overly concerned. He sued the company for patent infringement, thinking it was an open-and-shut case, thanks to his patent. But he didn't know what he was in for.
GT Water turned around and challenged Luoma's patent, dragging him into the Patent Trial and Appeal Board, where, to his disbelief, all 12 of the claims that justified and formed the basis for his patent were invalidated.
Malone said Luoma's experience is all too common. He pointed to an IP Watchdog study which found that out of 2,534 patents reviewed by the board between 2012 and 2019, 84% were either partially or totally overturned. Malone said the tough stance on patents was meant to crack down on bogus patents, including those filed by patent trolls, but many innocent bystanders were injured in the crossfire.
"Gene's case is not an outlier, and he should not be going through this," he said.
Malone, the creator of Bunch O Balloons, a device that enables its users to fill up to 100 water balloons in a minute, underwent his own patent infringement battle. He spent about $20 million before prevailing against TeleBrands.
"They finally surrendered because they were having to spend more to fight me in court than they could steal from me," he said.
Malone counts himself fortunate that his licensing partner stood by his side through the struggle to protect his patent. He acknowledged most inventors, like Luoma, are less fortunate.
Luoma said that under the terms of his licensing agreement, MASCO was to share equally in the cost of defending the patent for the Zip-It, should a challenge arise. But when the challenge surfaced, he said his business partner offered virtually no assistance at all.
Luoma said to date, he has personally spent about $450,000 to defend his patent. MASCO has left him to pick up the tab, and Luoma said the company wouldn't even agree to disclose how many Zip-Its it had sold — information that would have been useful to his defense — claiming it would divulge sensitive information to competitors.
MASCO did not respond to requests for comment for this story.
Luoma said he now believes MASCO had little interest in even seeing his patent defended, as they discontinued making royalty payments when it was invalidated.
"It was to their benefit to not pay me the royalties," he said. But Luoma noted that the decision may have been short-sighted as the proliferation of knock-off products has cost MASCO some serious market share.
As the average cost of defending a patent is about $450,000, Malone said many inventors are priced out of the fight from the beginning.
"So, that wipes out most small businesses right there," he said. "If you just challenge their patent, they fold, they crumple."
Luoma has seen the royalty checks he once received for his drain-cleaning device completely dry up.
He once could count on MASCO to consistently provide his family with six figures of revenue annually. And that money helped him make ends meet as a self-employed inventor and entrepreneur.
Luoma has facioscapulohumeral muscular dystrophy, and two of his three children are afflicted with the same disease. His royalty checks helped the family cover hefty medical bills; the cost of personal care for his son, Brian, a quadriplegic who lives next door; as well as expensive mobility devices.
Luoma has prided himself on his ability to meet those needs and keep his family members relatively independent up to now.
"After all, that's a parent's obligation," he said.
Luoma acknowledged his patent battle has been a distraction from his work as an inventor in recent years. But he says the gears of innovation never stop spinning in his mind.
While he has severed his ties with MASCO, Luoma said he has retained the Zip-It trademark and lately, he has been refining the product's design in an effort to make it even more effective. And yes, he intends to patent the new device. He's now selling his updated version of the Zip-It directly to consumers on eBay.
Luoma said he feels compelled to share his story not out of a desire for personal attention.
"I'm not doing this for fame and fortune. I just want to make people aware of what's happening," he said. "If I can do anything that helps someone else in this situation, it will have been worth it."