IN THE UNITED STATES DISTRICT COURT DISTRICT OF NEW MEXICO CREATIVE GIFTS, INC., FASCINATIONS TOYS & GIFTS, INC., and WILLIAM HONES Plaintiffs, CIV.97 1266 LH/WWD v. UFO, MICHAEL SHERLOCK, KAREN SHERLOCK Defendants. AFFIDAVIT OF HARRY F. MANBECK JR. DISTRICT OF COLUMBIA ) )ss WASHINGTON ) I, Harry F. Manbeck, Jr., being duly sworn, hereby depose and say as follows: 1. I am an attorney-at-law and a former Commissioner of Patents and Trademarks for the United States. My offices are located at 555 13th Street, N.W., Suite 701-E, Washington, D.C. Prior to becoming Commissioner, I practiced patent law as an attorney for approximately 35 years, and for the last twenty of those years I was General Patent Counsel of the General Electric Company. Since leaving government service I have continued in the practice of patent law specializing in litigation consulting and counseling. 2. I have considerable experience in patent practice and procedures. This experience has included the analysis of many patents involving a wide range of technologies. I am particularly experienced in the analysis of patent inventorship, validity, unenforceability and infringement issues. 3. Attached as Exhibit 1 is my curriculum vitae. My standard consulting fee which I am receiving for my work in this matter is $415 per hour. No part of my compensation depends upon the outcome of this matter. 4. I am familiar with the summary judgment motion filed by Defendants in the above captioned action and am submitting this affidavit in support of Plaintiffs? opposition to that motion. 5. I have reviewed U.S. Patent No. 4,382,245, to Harrigan ("Harrigan Patent") and U.S. Patent No. 5,404,062 to Hones et al. ("Hones Patent") and, based on all I have seen, have reached the following conclusions. 6. The Harrigan Patent discloses and claims a levitation device having a dish-shaped lower magnet, with the lower magnet having a concave upper surface. Harrigan Patent, col. 1, lines 29-30; col. 4, lines 50-51. The concave surface is disclosed as creating a magnetic field in the shape of a cone. Harrigan Patent, col. 2, lines 5-15, col. 3, line 67 - col. 4, line 3. The Harrigan Patent describes other ways in which the conical field may be produced (Harrigan Patent, col. 4, lines 30-38), but the claims of the Harrigan Patent are limited to a dish-shaped magnet. At one point during the prosecution of the Harrigan Patent, claims were presented to the U.S. Patent and Trademark Office which might be read as covering something broader than a levitating device having a dish-shaped magnet. Those claims were canceled. Therefore, the Harrigan Patent is limited to a levitating device having a dish-shaped magnet with a concave upper surface. 7. The Hones Patent, on the other hand, is directed to a levitation device in which the lower magnet has a substantially planar upper surface in which the magnetic field is magnetized normal to the upper surface. (Hones Patent, col. 7, Lines 26-29). This clearly differentiates the claimed invention in the Hones Patent from that disclosed and claimed in the Harrigan Patent. There is no overlap between the claimed subject matter of the Hones Patent and the Harrigan Patent. The Harrigan Patent is clearly limited to a levitating device having a dish-shaped magnet with a concave upper surface, while the Hones Patent is limited to a levitating device having a magnet with a planar (flat) upper surface and a magnetic field extending normal to the upper surface. 8. I have read the affidavits of Dr. Edward Hones and Mr. William G. Hones which explain how the top disclosed and claimed in the Hones Patent was conceived and reduced to practice by them. These affidavits clearly establish that Dr. and Mr. Hones were the sole inventors of the claimed subject matter of the Hones Patent and that Mr. Harrigan did not contribute to the invention. It is noteworthy that the Hones Patent acknowledges the Harrigan Patent as prior art and describes accurately what is described in the Harrigan Patent. Hones Patent, col. 1, line 61 - col. 2, line 12. Thus, the patent examiner had before him in his deliberations the Harrigan prior art and determined that the Hones invention was patentable over it. 9. It is my opinion, which I believe would be concurred in by any experienced patent attorney, that the claims of the Harrigan patent do not cover the device disclosed and claimed in the Hones Patent, and that the claims of the Hones patent do not cover the device disclosed and claimed in the Harrigan Patent. In other words, although the Harrigan device was a precursor to the Hones device, and was acknowledged as such in the Hones Patent, there is no conflict between the patents. 10. There is a procedure provided for in the U. S. Patent Laws whereby an interference can be declared if two patents have overlapping subject matter. See 35 U.S.C. §135. There is no basis here for having an interference declared pursuant to U.S. Patent Law. 11. I have examined a Levitron® Anti-Gravity Top marketed by Fascinations Toys & Gifts, Inc., a Plaintiff in the above captioned action, which I have been informed is representative of their product offering. My opinion is that the Levitron® Anti-Gravity Top is covered by the Hones Patent but not by the Harrigan Patent. This is because the Levitron® Anti-Gravity Top has a flat lower magnet with a planar surface that cannot be considered to be dish-shaped so as to present a concave upper surface. 12. I am aware that an attorney representing Mr. Harrigan has presented an argument that Mr. Harrigan contributed to the Hones invention. In that regard, I have been shown a letter from Mr. Harrigan's attorney to counsel for Creative Gifts, Inc., a plaintiff in the above captioned action, to which is attached a dialog that is alleged to be an excerpt from a transcript of a videotape made by Mr. Harrigan. The videotape purportedly recorded a meeting between Mr. Harrigan and Mr. William Hones in September 1993. I am informed that Mr. Hones has no recollection of such videotape being made, and therefore it is possible that the excerpt cannot be authenticated. But even if it could be authenticated, I do not believe it would support a claim that Dr. Edward Hones and Mr. William Hones were not sole inventors of the device claimed in the Hones Patent. A scope of a patent is determined by its claims. The videotape excerpts do not evidence any contribution by Mr. Harrigan to the claimed subject matter of the Hones Patent. Fairly read, the excerpts confirm that Mr. Harrigan?s concept was that, however the lower magnet was formed, it was required that a cone-shaped field must be produced. This is consistent with the Harrigan Patent which, in column 4, lines 30-34, points out that the lower magnet need not be dish-shaped to produce a field having an equal potential concave upper surface and/or lines of magnetization defining a cone. The videotape excerpts are consistent with this statement from the Harrigan patent and, to me, confirms Mr. William Hones? affidavit that Mr. Harrigan always emphasized the need for a cone-shaped field. As pointed out above, neither the Hones Patent nor the Levitron® Anti-Gravity Top uses a cone-shaped field. 13. I have studied the following materials in preparing this affidavit: a. U.S. Patent No. 5,404,062, to Hones et al, and its prosecution file history, specification and claims; b. U.S. Patent No. 4,382,245, to Harrigan, its prosecution file history, specification and claims, as well as U.S. Patent No. 2,323,837, to Neal; c. Excerpts of what is purported to be a transcription of a recorded portion of a meeting Mr. William Hones had with Mr. Harrigan during September 1993, and the letter from Mr. Harrigan?s attorney to which the excerpts were attached; d. Article from Magnets In Your Future magazine by Les Adam entitled "UFO"; e. An article written by defendants on their levitron.com website entitled "The Hidden History of the Levitron"; f. An abstract written by Martin Simon and Leo Heflinger entitled "Spin Stabilized Magnetic Levitation"; g. An article written by J. M. McBride entitled "A Toy Story: The Chemical Relevance of Earnshaw?s Theorem, and How the Levitron ® Circumvents It"; h. Affidavits of Dr. Edward Hones and Mr. William Hones prepared for submission in support of Plaintiffs? Opposition to Defendants? Motion for Summary Judgment; and i. Commercial embodiment of the Levitron® Anti-Gravity Top marketed and sold by plaintiff Fascinations Toys and Gifts, Inc. Further affiant sayeth not. Date: February 25, 1998 [signature] Harry F. Manbeck, Jr. Sworn and subscribed to before me this 25th day of February, 1998 [signature illegible] Notary Public My Commission Expires on January 1, 2000 ******************** Biography Harry F. Manbeck, Jr. Harry F. Manbeck, Jr. is an attorney-at-law with offices in Washington, D.C. >From March 1990 to May 1992, he was Assistant Secretary of Commerce and Commissioner of Patents and Trademarks of the United States. He was nominated to these offices by President Bush on October 11, 1989 and confirmed by the Senate on March 9, 1990. Prior to his government service, Mr. Manbeck practiced patent law for over thirty-five years and at the time of his appointment he was General Patent Counsel of the General Electric Company. He joined General Electric in 1949 and advanced to become General Patent Counsel in 1970, which position he held until becoming Commissioner. Prior to joining the General Electric Company, he served in the U.S. Army Signal Corps. A native of Honesdale, Pennsylvania, Mr. Manbeck graduated with Highest Honors from Lehigh University in 1949 with a B.S. in Electrical Engineering. He received his L.L.B. with Honors from the University of Louisville in 1954. Mr. Manbeck is a member of the District of Columbia, Connecticut, Indiana, Kentucky and Massachusetts bars and is admitted to practice before the Court of Appeals for the Federal Circuit. He is also registered to practice in front of the United States Patent and Trademark Office. Mr. Manbeck has served as Chairman of the Patent, Trademark and Copyright Section of the American Bar association; President of the Association of Corporate Patent Counsel; a Director of the Intellectual Property Owners, Inc.; and a Director of the Bar Association of the Court of Appeals for the Federal Circuit. He is also a member of the American Intellectual Property Law Association and the Connecticut Patent Law Association. In 1984 Mr. Manbeck was awarded the Whitney North Seymour Medal of the American Arbitration Association for contributions made to the process of arbitration in the United States. Mr. Manbeck is married to the former Julia P. McCarthy and they reside in McLean, Virginia.