On September 26, 2002, the New York Times ran a page 1 story titled "Panel Says Bell Labs Scientist Faked Discoveries in Physics," with a first sentence "A series of extraordinary advances in physics claimed by scientists at Bell Labs relied on fraudulent data, a committee investigating the matter reported yesterday," referring to the committee headed by Professor Malcolm Beasley of Stanford University, which had issued a 127 page report on the matter. n2 A headline in the Newark Star-Ledger was even less kind: "Scientist's 'breakthrough' secret: He cheated." n3 Of the impact, the Times article noted: "the scandal tarnishes surrounding participants, including the co-authors who noticed nothing amiss, the scientific journals that critics say moved too quickly to publish the sensational findings, and Bell Labs' parent company, Lucent Technologies, which has been buffeted by a collapse of the market for its telecommunications equipment and tens of thousands of layoffs."

The report implicated only one scientist, Jan Hendrik Schon, and found 16 instances of scientific misconduct pertaining to a certain set of published papers. One of these papers, concerning superconducting oxidized buckerminsterfullerene, n4 illustrates some of the problems. A year ago, managers at Bell Labs were touting the work. Kitta MacPherson quoted Federico Capasso as saying "This shows that buckyballs may live up to their initial promise of being a material that will be very important to technology." n5 After the Beasley report, The Economist noted: "Through a carefully staged set of "improvements" to the technique, he got this up to 117degrees -- well into the liquid nitrogen zone. Buckyballs are a discovery looking for an application, and it seemed as though Dr Schon alone had found one." n6

Separately, there is an issue with the role played by scientific journals. The Asian Wall Street Journal reported: "Physicists are fuming that Science and Nature were warned not to publish Dr. Schon's problematic papers in 2001. But the two are locked in such fierce competition for prestige and publicity that they may be cutting corners to get "hot" papers. "These were revolutionary findings," physicist Robert Austin of Princeton University says. "Science and Nature should have been very cautious. When journals fail, and they did here, the system breaks down." Editors at both say they published only after thorough review and in good faith." n7 In turn, Nature had queried whether researchers in the physical sciences were ready to tackle the issue of misconduct in an article entitled "Time to wise up?", published July 11, 2002. n8 This article had some flaws.

First, the Nature article conspicuously omitted discussion of the efforts of Paul Solomon of IBM to publish a criticism of the Schon work n9 On November 5, 2001, Solomon had written a letter to Nature about the Schon work; his discussion included text: "In short, the problem we raise is profound and involves the very basics of our understanding of electrostatic devices . . . " Nature did not publish Solomon's letter. Solomon noted to me on October 2, 2002 of Nature's failure to publish his letter: "The fact that such letters are not published leads to a false impression that results such as Schon's, being published in the "most prestigious scientific journal" has received the imprimatur of his scientific peers. It can mislead the broad readership of Nature who by and large do not have the tools to evaluate it for themselves. Such an article would not have been accepted for publication in the 'less prestigious' specialist literature."

Second, the Nature article did not accurately report on the Task Force on Ethics of the American Chemical Society, of which this author is a member. The purpose of the Task Force has been to recommend whether or not a permanent ethics committee is established and to define the scope of the committee. Although in the end, the resultant committee may have primarily an educational role, the Task Force contemplated issues of "journal error" n10 and of "co-author responsibility." n11

On October 7, 2002, there were reports that Bell Labs was withdrawing six (6) patent applications in the field of nanoelectronics, including molecular scale transistors and superconductivity. n12 Of application 20020121669 ("Organic superconductive field-effect switching device," filed January 16, 2002), one notes claim 3 to a "methylene trihalide," claim 4 to a "methylene trichloride," and claim 5 to a "methylene tribromide," all non-existent compounds. Even if the data were not suspect, there might have been other problems here.

Festo Again 

On September 20, 2002, the Federal Circuit ordered briefing on the following issues:

1. Whether rebuttal of the presumption of surrender, including issues of foreseeability, tangentialness, or reasonable expectations of those skilled in the art, is a question of law or one of fact; and what role a jury should play in determining whether a patent owner can rebut the presumption.

2. What factors are encompassed by the criteria set forth by the Supreme Court.

3. If a rebuttal determination requires factual findings, then whether, in this case, remand to the district court is necessary to determine whether Festo can rebut the presumption that any narrowing amendment surrendered the equivalent now asserted, or whether the record as it now stands is sufficient to make those determinations.

4. If remand to the district court is not necessary, then whether Festo can rebut the presumption that any narrowing amendment surrendered the equivalent now asserted.

There has been some discussion of the origin of the foreseeability test: whether it arises from the IEEE amicus brief or from the decision in Sage Products n13 or elsewhere. If the estoppel inquiry of the IEEE were the origin of the foreseeability test, then it would seem clear that this would be an issue of law. In contrast, many of the initial district court decisions following Festo accepted declarations to address the issue of a "foreseeable equivalent." n14 These declarations are procedurally in the awkward position of proving a negative: that something was NOT foreseeable. n15 Much of the struggle with the tests arises from the lack of any background in the Supreme Court decision for the tests. In the Supreme Court opinion, they appear without footnotes and without much elaboration. Much work will have to be done to flesh them out. In this, one suspects that greater detail by the Supreme Court could have been helpful in providing guidance to litigants walking this new territory. In some sense, this is like the lack of precision in the -- related to patentability -- text in Warner-Jenkinson in 1997 which required resolution in Festo in 2002. While one suspects that the Supreme Court is allowing the Federal Circuit to work out the details over time, one recalls that large segments of the business community were backing the absolute bar of the en banc Festo decision because it reduced uncertainty relative to the flexible bar of Hughes-I. Now we have a different flexible bar, which needs to be built from scratch. There will be a lot of uncertainty in this process.

Eldred v. Ashcroft

On October 9, oral argument was heard in the copyright case of Eldred v. Ashcroft. A basic question is who is to define the word "limited" in the Constitutional text "by securing for limited times" of Article I, Section 8, paragraph 8: Congress or the Supreme Court? Chief Justice Rehnquist observed that the Constitution gave Congress "a general grant," and "Congress is free to run with it." Invocations to the Constitution can mask interest group combat, and that may be the case here. Although there was the usual talk of providing incentives to authors, on a number-average basis few authors obtain any benefits from the copyright law. Justice Stevens asked if the copyright clause allows Congress to promote with incentives for distribution and preservation. Separately, Solicitor General Olson stated that incentives extend to publishers and commercializers.  

In Passing

In a decision on Oct. 11, Andrx (which holds the exclusivity period) lost its case against AstaZeneca on PRILOSEC, although a different generic entity (KUDCo of Schwarz Pharma) did not lose. On Oct. 10, Intel lost to Intergraph in the dispute over Intergraph patents covering the Itanium processor. In Madey v. Duke University (Oct. 3, 2002), the Federal Circuit found only a very narrow scope for the experimental use exception. Stating that REGARDLESS of whether an institution is engaged in an endeavor for commercial gain, as long as it furthers the alleged infringer's legitimate business and is not solely for amusement, to satisfy curiosity or philosophical inquiry, the experimental use exception will not apply. Universities are in trouble with this decision. Separately, the television show Law & Order ran another episode on Oct. 2 wherein one scientist accused his superior of stealing his ideas, with the subordinate subsequently being terminated. This time, the technical area was stem cells, and the subordinate became a taxi driver, rather than a doorman. This scientist, portrayed in an unsympathetic light, was not a murderer, unlike the sympathetic doorman, who was a murderer, whose trial ironically gave him proper credit for his theory of proton lifetime. Television presents simple images with a plot line to reach a conclusion in a short time. Legal cases also have to reach a conclusion in a relatively short time, but they are not necessarily simple and not necessarily amenable to highlights. Of previous discussion about Rule 36, one notes that the written opinion made no mention of the unanswered requests for admission, so that this case will never be reported in Wright & Miller as an exception to the Federal Rule that unanswered admissions are deemed admitted. Such omission leads to a caveat in reviewing cases; when one sees what appears to be a curiosity or a blunder, one can never really be sure that all that should be there is really there. In the end, omissions of fact can render a document as questionable as fabrications of fact, wherein there might be no there there.

End Notes

n1 The viewpoints expressed within the article are those only of the author, and not those of any employer, past, present or future. The author may be reached at ebert@email.com, c8asf5@yahoo.com, or 609-514-5951. The author holds a Ph.D. in physical chemistry from Stanford University, where he was a Fannie and John Hertz Foundation Fellow and worked in the Center for Materials Research; the author holds a J.D. from the University of Chicago.

n2 Kenneth Chang, New York Times, page A1 (Sept. 26, 2002). A copy of the report is available at www.lucent.com/news_events/researchreview.htm 1. Reports by Reuters and by Wired News on Oct. 11 indicated Lucent planned a reduction in force of 10,000 workers by end of fiscal 2003. Reuters noted that Lucent might run out of cash before it turned itself around.

n3 Kitta MacPherson and Kevin Coughlin, Newark Star-Ledger, p. 1, p. 14 (Sept. 26, 2002). As reported in L.B. Ebert, "Abstracting Festo: which line to draw," Intellectual Property Today [IPT], pp. 44-45 (Oct. 2001), the same Kitta MacPherson had reported on August 31, 2001: "In a period marked by a spate of exciting discoveries in an exotic field of physics, scientists at Lucent Technologies in Murray Hill are reporting another milestone in superconductivity."

n4 We had commented on this work one year ago in IPT, pp. 44-45 (Oct. 2001): "One notes that the material studied was oxidized (hole injected) buckyballs and not neutral buckyballs. The purpose of the bromoform was to separate the buckyballs, although it is separately true that bromoform has some stability issues. The earlier superconductor C60K3, which is based on electron injection (reduction) is not stable to air or water."

n5 The failure of buckyballs to live up to much of the early hyperbole has been documented in articles by the author: L. B. Ebert, Carbon, 1995, 33, 1007; Carbon, 1997, 35, 437; and IPT, p. 24 (March 2000)(Risk-Aversion and Iatrogenic Events: Not All Patent Claims (or Lawyers) Are Created Equal).

n6 Outside the Bell curve, The Economist, Sept. 28, 2002. The article noted of the co-author issue: "All of Dr Schon's 90 papers had co-authors -- people who should, if things had worked the way they are supposed to, have been able to vouch for the quality of the research. But in practice, Dr Schon was actually working by himself. As the Beasley inquiry report puts it:

'None of the most significant physical results was witnessed by any co-author or other colleague.' That did not stop them putting their names to the work, though." The Economist also noted: "The fraud was his [Schon's] responsibility. So are the millions of dollars that have been wasted following his 'results' up." In passing, we note that, within the June, 2002 issue, Technology Review gave Dr. Schon a TR100/2002 award. This reminds one of remarks made by Judge Alex Kozinski on June 16, 1997 at a meeting partially sponsored by the New York Academy of Sciences about the promiscuity of science in bestowing awards and never checking back (refer to text within SSI-11 paper mentioned in endnote 10).

n7 Sharon Begley, Research Stumbles When Cheaters Think They're Safe, Asian Wall Street Journal, September 30, 2002. See also Sam Jaffe, Journals Tussle Over Talent; the competition among journals to be the first to publish ground-breaking research can cost science dearly in grants for fruitless followup," The Scientist (Oct. 14, 2002). Therein, Jaffe quotes Dr. Tak Wah Mak of the University of Toronto: " . . . the impact of a mistake in a prestige journal is much worse. . . . These journals have almost as sacred a mission to keep mistakes from happening as the pope does." Mak noted that it takes years for erroneous information to be retracted and pulled from databases, if ever. Separately, this author notes that fifty years elapsed between an error in the Journal of the American Chemical Society (JACS) in 1948 and the full impact of that error in the nabumetone case, and that JACS has a policy against third party correction of error, which policy was discussed by the Ethics Task Force.

n8 Geoff Brumfiel, Time to Wise Up?, Nature, Vol. 418, July 11, 2002, pp. 120-121.

n9 We discussed the rules of Nature for third party commentary, such as that of Paul Solomon, in our article "Rosalind Reprised," Int. Prop. Today, p. 5 (July 1997). In our case mentioned in 1997, our authors decided not to attempt a third party commentary about an article in Nature which [incorrectly] discussed the paper L. B. Ebert et al., "Chemistry and palynology of carbon seams and associated rocks from the Witwatersrand gold-fields, South Africa," Ore Geology Reviews, 1990, 5, 423-444.

n10 This author presented to the Task Force issues of journal error and the imperfect mechanisms for correction thereof which were documented in a paper at SSI-11 (see discussion of Energy & Fuels available at www.eng.hawaii.edu/ ssi11/SSI-11/Papers/P3.pdf wherein, among other things, the editor would not even correct a citation to a non-existent article) and within IPT ("A Tale of Conflicting Models -- The Coming Skirmish on the IP Frontier, Int. Prop. Today, July 2001, discussing the journal error of the J. Amer. Chem. Soc. leading to the problem in the nabumetone case and another journal error within J. Amer. Chem. Soc. concerning poly (carbon monofluoride) Each Task Force member was furnished with a copy of In re '639 Litigation, 154 F. Supp. 2d 157 (D. Mass. 2001) to illustrate how an uncorrected journal error can lead to unexpected consequences in the business and legal realms.

n11 For example, the Task Force was aware that some of Dr. Schon's co-authors were chemists.

n12 Linda A. Johnson, "Bell Labs Withdraws Patent Requests," AP, October 7, 2002; Jeff May, "Lucent pulls patent bids to 'correct the record,' Newark Star-Ledger, p. 14 (Oct. 8, 2002). Curiously, although the Beasley report investigated journal articles, the initial outcome was the termination of Schon and the withdrawal of the patent applications. As this IPT article goes to press, the Schon journal articles have not been withdrawn. In the case of a paper about engineered corn in Mexico, Nature unilaterally retracted the paper when Nature felt the evidence available did not justify the paper. (See L. B. Ebert, "Johnson & Johnston: Disclosed, Never Claimed, Public Domain," IPT (May 2002) citing to Mare Kaufman, Washington Post (April 4, 2002). See New York Times, page F4 (Oct. 15, 2002). 

n13 Of the difference between the IEEE test and the Sage Products test, Andrew Greenberg wrote to me: "However, it is clear to me that the analysis to support or reject a foreseeability test for scope of PHE is different, except for some obvious analogies, than the analysis to support or reject, say, the Sage test."

n14 L. B. Ebert, It's a strange, strange world, IPT, pp. 46-47 (Oct. 2002). Avail. LEXIS.

n15 The impossibility of proving a negative was a theme much discussed by Abraham Lincoln in the Lincoln-Douglas debates: "A man cannot prove a negative, . . . I certainly cannot introduce testimony to show the negative about things, . . . (Ottawa, Aug. 21, 1858). Separately, there has been much talk about a transistor/vacuum tube hypo. If hypothetically there were, before transistors, a claim element to an amplifier, then the later-invented transistor would fall within the literal scope. If there were a claim element to an vacuum tube amplifier, then the later-invented transistor should not fall within the literal or equivalent scope of the claim. Supreme Court caselaw, such as Gould v. Rees, 82 U.S. 187 (1872), did not allow a later-discovered element to be an equivalent. If one were dealing with an amended claim, the absence of estoppel should not operate to expand the scope of an equivalent. The doctrine of equivalents operates to give to the inventor what he disclosed, as understood by one of ordinary skill at the time. Unforeseeable equivalents are not within that scope.