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. EXPERT REPORT OF PROFESSOR J. MICHAEL MCBRIDE Pursuant to Rule 26(a)(2)(B) 1. I am Dr. J. Michael McBride, Professor of Chemistry in Yale University. My office and laboratory are in the Sterling Chemistry Laboratory, 225 Prospect St., New Haven, Connecticut 06520. After undergraduate study at the College of Wooster, and Harvard College, I received the B.A. from Harvard College in 1962, and the Ph.D. in physical-organic chemistry from Harvard University in 1967. In 1966 I became an Assistant Professor of Chemistry at Yale University where I have continued to teach and carry on research in physical-organic chemistry. 2. For the past 32 years my teaching has been in the area of organic chemistry, and my research has been in the area of solid-state chemistry of molecular crystals. The principal tool in my research during all this time has been electron paramagnetic resonance. This research has required developing familiarity with many principles of magnetism, especially the shape of magnetic fields and the through-space interaction of magnetic dipoles. Supervising the thesis research of Mark D. Hollingsworth on solid-state infrared spectroscopy required developing familiarity with the closely analogous interaction of transition dipoles. Because of this work we were jointly awarded the American Chemical Society’s Nobel Laureate Signature Award in Graduate Education recognizing the outstanding Chemistry Ph.D. thesis in the United States in 1987. 3. Attached as Exhibit 1 is my curriculum vitae, which includes a list of publications which I have authored. My only service as an expert witness within the last four years consisted in preparing a report for a patent infringement case involving Abbot Laboratories in 1998. This case was settled before coming to trial. I have offered to testify for the defendants in the present action without compensation because of my belief in the justice of their case and my admiration for the fair and principled stand they have taken throughout this matter, at great risk to their own financial well being. If any of my time is chargeable to the plaintiffs, I would expect to be paid at the same rate as in the above referenced patent infringement case. No portion of my compensation depends on the outcome of this matter. 4. I have been fascinated by the Levitron ever since my son was given one in late December 1996. Permanent magnet levitation so astonished me that I became determined to understand it. Since the explanations in the pamphlet Levitron Physics that accompanied the device and in U.S. Patent No. 5,404,062, to Hones and Hones were unconvincing, I studied the paper of Professor Michael V. Berry "The Levitron: an adiabatic trap for spins" Proc. Roy. Soc. London, 452, 1207-1220 (1996). I corresponded with Professor Berry to confirm the correctness of my understanding of his explanation. 5. I have subsequently lectured twice on the Levitron (to the Yale Science & Engineering Association, February 4, 1997, and to the Yale Physics Club, April 11, 1997) and have presented a poster "Toy Story: The Chemical Relevance of Earnshaw’s Theorem and How the Levitron Circumvents It" at two international scientific meetings (the Gordon Research Conference on Physical-Organic Chemistry, June 29-July 4, 1997, and the Thirteenth International Congress on the Chemistry of the Organic Solid State, July 14-18, 1997). I adapted the poster for a web page of the same title which has been available at koerner.chem.yale.edu/levitron.html since July 29, 1997. Several times I have used the Levitron in classroom lectures in demonstrating the principles of magnetic resonance. 6. I have read everything I could find concerning the Levitron including the following: a. Patents: U.S. Patent No. 2,323,837, to Neal U.S. Patent No. 4,382,245 to Harrigan ("Harrigan Patent") U.S. Patent No 5,404,062, to Hones and Hones ("Hones Patent") b. Scientific Papers and Preprints: S. Earnshaw, "On the Nature of the Molecular Forces which regulate the Constitution of the Luminiferous Ether" Trans. Cambridge Philos. Soc., 7, 97-112 (1842) and subsequent explications of this paper in textbooks by Maxwell, Jeans, Page & Adams, Feynman, and others. M. V. Berry "The Levitron: an adiabatic trap for spins" Proc. Roy. Soc. London, 452 1207-1220 (1996). R. Edge, "Levitation using only permanent magnets" Phys. Teach., 33, 252-253 (1995). M. D. Simon, et al. "Spin stabilized magnetic levitation’ Am. J. Phys., 65, 286-282 (1997). T B. Jones, et al., "Simple Theory for the Levitron", J. Appl. Phys., 82, 883-888 (1997). R.F. Gans, et al, "Dynamics of the Levitron", MS submitted to J. Phys. D. (1998). E.H. Brandt, "Levitation in Physics" Science, 243, 349-355 (1989). c. Ephemera: J. Chieffo (?), "The Levitator" Privately published plans for a levitating magnetic top from Magneflight of Marcus Hook, Pennsylvania, ca. 1989. Les Adam, "UFO" Magnets in Your Future, 5, 4-7 (1991). More than a dozen magazine and newspaper accounts, especially Fred Guterl, "Playthings of science; toys based on new scientific discoveries" Discover, 17, 54 (December 1996). "Levitron Physics" Hones / Berry, Pamphlet supplied with Levitron. d. Web Sites: Sherlock and Sherlock, "Hidden History of the Levitron" (www.levitron.com) Philip Gibbs and Andre Geim, "Is Magnetic Levitation Possible?" e. Tapes and Transcripts: June 16, 1995 broadcast of Bill Hones interview on the Laura Lee radio show. Excerpts of a transcription of a recorded meeting between William Hones and Roy Harrigan during September 1993. "Secrets of the Levitron: The Art of Levitation", Instructional video from UFO. f. Personal Communication: I have had personal scientific communication about the Levitron with Michael V. Berry, Edward W. Hones, Roy M. Harrigan, Martin D. Simon, and Thomas B. Jones; with numerous Yale Chemical Physics, Physics, and Applied Physics Colleagues especially Professors John Tully, Charles Sommerfield, and Daniel Prober; and with many other scientists. In addition I have had personal communication related to commercial aspects of the Levitron with Michael and Karen Sherlock, Michael W. Vary, George C. Myers, Jr., and Ronald J. Riley. g. Legal Documents: I have carefully read the Memorandum of Law and supporting documents filed 2/9/98 in behalf of the Plaintiffs in the present action, which were sent me by George C. Myers, Jr. I have carefully read the Defendants Reply and supporting documents filed 3/23/98, which were sent me by Michael and Karen Sherlock. In particular I have studied the affidavits of the following individuals: Dr. Edward Hones Mr. William Hones Mr. Saul Leitner Mr. Harry Manbeck Dr. Peter Campbell Mr. Harley Adam 7. Based on my review of these items and my scientific experience I expect to testify as follows: 8. Neither the Harrigan Patent nor the Hones Patent displays a correct understanding of the scientific basis for operation of the levitating top. Because they violate Earnshaw’s theorem, the computer calculations presented in the Hones Patent are fundamentally flawed and thus irrelevant. They represent no advance over the Harrigan Patent in understanding this device. 9. When in his expert report Dr. Campbell’s states …it is my opinion that the Hones’ patent and Affidavits demonstrate that they have developed a good theoretical understanding of magnetic levitation, which has led them to devise a more practical and commercially viable levitation device… he is either revealing his own failure to understand the device or obfuscating. 10. The initial discovery of Mr. Harrigan was, from a scientific point of view, absolutely stunning. The more knowledgeable the physicist, the more she or he would be amazed by its success. I am confident that no qualified physicist could have anticipated this discovery. Indeed several physicists strongly discouraged Harrigan from attempting levitation of permanent magnets, as at least one had discouraged William Hones. This presumably led to Hones’s initial skepticism of the operability of the Harrigan device. In nominating Harrigan for recognition as Lemuelson-MIT Inventor of the Week I wrote, Without his faith, insight, and persistence, the phenomenon {spin stabilized levitation of a magnetic top would NEVER have been discovered. This has got to be the classic case of one style of invention, and of exploitation of the inventor. 11. By contrast, the contribution of Hones and Hones, while perhaps representing considerable effort on their part ( achieved, however, in a relatively short time), represents no more than a fairly obvious extension of the Harrigan invention. It may well be that Edward Hones’s reading suggested to him the use of a square planar magnet, but that this extension was readily accessible to one skilled in the art is amply demonstrated by Mr. Adam and the first two entries under "Ephemera" (6c) above. It is also true that Harrigan recommended the use of planar magnets to Hones. I have no doubt that Hones and Hones worked hard and effectively at commercializing, manufacturing, and marketing the levitating top, but in my view these activities are distinct from patentable invention. 12. Paragraph 9 of Manbeck’s expert report provides the following cogent definition of "inventor", It is the one who conceives the mental part, [sic] of the complete operative invention who merits the title ‘inventor.’ Conception, and hence inventorship, does not occur until the idea is so clearly defined that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation. By this criterion it is my opinion that Roy Harrigan is the inventor of the Levitron, since only ordinary skill was required to develop the complete operative invention from his concept. 13. In my view, the Hones patent should not have been allowed to Hones and Hones, because it is clearly derivative from the ground-breaking Harrigan Patent and because it does not clearly acknowledge the role that Harrigan played in providing the video, personal instruction, and working prototype that permitted its development. I will leave it to those better schooled in U.S. Patent Law to determine whether all of these intellectual debts were properly revealed to the patent examiner, and if not, whether the failure was deliberate or accidental and whose was the responsibility. It is notable that the current legal arguments of the plaintiffs continue to minimize these debts, although William Hones repeatedly underlined the indispensable role of spin stabilization during the time when he, Hones, still claimed credit for this discovery of Harrigan’s 14. My previous affidavit included the following passage: I declare under penalty of perjury under the laws of the United States of America that the actions, statements, and opinions ascribed to me in the following excerpts from the article "The Hidden History of the Levitron," which appears on the website at www.levitron.com are true and correct. Perhaps I should clarify two "Hidden History" passages that some might find misleading. The first passage We traded Michael [McBride] a Super Levitron for Roy Harrigan’s phone number. might be read to imply that I did not pay for the device. In fact I paid in full by credit card. 15. The second passage to be clarified states that I had been alerted to the truth [that "Roy was definitely ripped off by Hones"] … just by looking at both patents. It is true that my suspicion that something was fishy was substantially heightened in early February, 1997, when I compared the patents, which I found suspiciously similar if arcane, as a layman, and unconvincing, as scientist. In fact I had been motivated to look into the patents by Professor Berry’s response to the following innocent question, which I had posed in the context of many other questions about the Levitron in mid-January, 1997: Do you know how the Levitron was invented? The theory seems too subtle to have preceeded invention (unless the inventor was being led by erroneous theory, like Edge’s). The tight constraints on stability must have inhibited empirical discovery. He responded, The Levitron was invented by Roy Harrigan of Vermont, and developed and marketed by Bill Hones of Seattle. That was the first I had heard of Harrigan. 16. By the time of my first conversation with Michael and Karen Sherlock in late June, 1997, my suspicion that Hones had "ripped off" Harrigan had been confirmed from numerous sources. Among the more influential of these sources were interviews with Bill Hones recounted in Discover magazine and recorded on an audio tape I had purchased from the Laura Lee Show. 17. In both places Hones points out, correctly, that the amazing key to success of the Levitron is spin stabilization, not tailoring of the magnetic field (despite the fact that the Hones Patent focusses on its spurious claim of discovering "A previously unrecognized characteristic of the magnetic field above a magnetic shell…"). At least implicitly, and arguably explicitly, he disingenuously and dishonestly claims the idea of spin stabilization as his own, making no mention whatever either of Harrigan’s patent or of his indebtedness to Harrigan, not only for the idea, but also for face-to-face instruction, and for a working prototype. 18. It is my opinion that without Harrigan’s active help in providing an advance video, instruction, and a prototype, Hones would not have developed his commercial levitating top. 19. My conclusion that Hones "ripped off" Harrigan is based not on a sophisticated analysis in light of U.S. Patent Law, but rather on my common sense of fundamental fairness in scientific and business dealings. I believe that few fair-minded, disinterested persons would disagree with me. 20. To the extent that additional information is brought to my attention during the course of this proceeding, I reserve the right to supplement this report. NEW HAVEN, CONNECTICUT Date: April 19, 1998 ___________[signature]____________ Prof. J. Michael McBride