Gould v. Schawlow

363 F.2d 908 (1966)

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Nature of the Case

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Facts

This dispute was over an apparatus for light amplification by stimulated emission of radiation, better known by the acronym 'laser.' The amplification of electromagnetic radiation by stimulated emission of radiation was first realized on a practical basis by devices operating in the microwave frequency range. The laser is an extension of the maser principle to optical wavelengths, i.e., infrared, visible and ultraviolet light. The heart of a maser-like device is a working medium, generally a gas or solid, containing atoms or molecules which have one or more sets of energy levels. The means used to excite or 'pump' the working medium to create an inverted population of atoms or molecules may comprise a source of electromagnetic energy, for example, a strong light of suitable wavelength directed at the working medium. D's patent uses the expression 'optical maser' to denote an apparatus performing the function of the 'laser.' D and P rely on their filing dates of July 30, 1958, and April 6, 1959, respectively, for constructive reduction to practice of the subject matter in interference, neither party alleging an actual reduction to practice prior to those dates. The junior party, here P, must prove by a preponderance of the evidence (1) conception of the invention prior to July 30, 1958, and (2) reasonable diligence in reducing it to practice commencing from a time just prior to July 30, 1958, to his filing date of April 6, 1959. 35 USC 102(g). P relies primarily on his own testimony coupled with Exhibit 1, which is a bound notebook identified as notebook #1. Pages 1 to 9, the only pages relevant here, were witnessed November 13, 1957, by a notary public. The notary testified that, while he did not read the contents of that notebook and would not have understood them had he tried to do so, 'those pages were full' at the time he signed on the margins. The board held that pages 1 to 9 did not disclose 'an operative embodiment of the subject matter. P submits that 'even a relatively untrained layman' should be able to understand that the disclosed apparatus meets the terms of the counts in those respects and that the board erred in failing to consider expert testimony on that issue. P introduced expert testimony intended to establish that Exhibit 1 constitutes a sufficiently full and clear conception to enable one of ordinary skill to build an operative laser. D also introduced expert testimony to show that Exhibit 1 was insufficient in that respect. The board held that P had not proved by a preponderance of the evidence that his conception of the laser device described in Exhibit 1 included side members which are non-reflective, viz. transparent to or absorptive of other energy, particularly undesired stimulated laser light, radiated thereat. To establish reasonable diligence from just prior to July 30, 1958, to April 6, 1959, P relies on his own testimony; that of his wife. The record shows that during that time P's attorney prepared the present application while concurrently engaged in a 40-day patent infringement trial in Utica, New York. Shortly after recording his alleged conception in Exhibit 1, P became cognizant of the potential high cost of building his proposed device. P 'conceived of a number of other pumping mechanisms besides optical pumping,' and spent 'maybe a hundred hours' searching the 'M.I.T. wavelength tables' for coincidences between strong spectral lines to find 'elements that could be optically pumped.' P sought to locate a research facility where experimental laser work could be done. P left his doctoral program and entered private industry. By the middle of December 1958, a proposal was completed and submitted to various government agencies and Aerojet General Corporation for evaluation with respect to building the laser. The Advanced Research Projects Agency subsequently awarded TRG a research contract totaling nearly a million dollars for development of the subject matter of the proposal. P estimated he spent 'approximately a thousand hours' acquiring the knowledge which enabled him to devise the ideas expressed in Exhibit 9, and that there were no months or weeks during that period in which he did not 'work on the laser.' The board stated: Occurrences such as Gould's failure to participate in the reconditioning of his boat in the spring of 1958, and conversations such as those with co-worker Newstein at TRG, Inc. and with Dr. Alan Berman at beach parties in May and August, 1958 do not corroborate specific significant acts directly related to giving the invention a physical embodiment. Such evidence is far too fragmentary and leaves to mere inference that Gould was actively engaged in reducing the invention to practice during this crucial period. We are not prepared to make this inference. Little attempt has been made to identify particular activity with particular times during the critical period of concern - July to December 1958 and especially July, August and September 1958 - or to establish how such activity related to reducing to practice the subject matter of the counts. The board found that the only relevant activities from July to September 1958 were in taking off from work at TRG and his discussion with Dr. Berman in August. The board stated: while reasonable diligence does not require that one abandon his means of livelihood to further his reduction to practice, it is incumbent upon P, if he intends to rely on the taking of time from his normal employment as acts of diligence, to establish what was done and when it was done. The party chargeable with diligence must account for the entire period during which diligence is required. The board ruled for D and P appealed.