Few intellectual property law firms ever face a challenge of the type our firm confronted when it was asked to represent Gordon Gould in 1975. Mr. Gould had filed an extensive (and now historic) patent application in 1959, disclosing over a dozen interrelated inventions covering fundamental laser technology. He had become embroiled in a series of protracted patent interferences against corporate giants such as Bell Labs, Westinghouse and Hughes Aircraft. In 1973 (before our firm became involved), Mr. Gould had lost the last of these interferences, in a decision which was read by many as holding that Gould's 1959 application had no disclosure of any operable laser technology. In addition to this decision, which potentially spelled doom for all of Gould's still pending patent applications, Gould had no funds left to pursue his efforts to obtain patents, let alone enforce those patents against the huge laser industry which had matured since Gould had made his inventions.
To represent Mr. Gould, our firm brought numerous and varied talents to bear. Over a period spanning some 15 years, in proceedings both in the Patent and Trademark Office (PTO) and in the courts, our firm obtained total vindication for Mr. Gould: four separate patents covering different laser inventions, each of which has been sustained by either the PTO Board of Patent Appeals and Interferences, or a court, or both. To date, the Gould patents have accounted for millions of dollars in royalties.
After our firm achieved its initial successes for Mr. Gould, it became clear that the laser industry would resist Gould's patents vigorously and collectively. To allow Mr. Gould to litigate on a level playing field, we were instrumental in arranging a large private financing and, thereafter, an even larger public offering, which provided the funding that was crucially necessary to see the matter through.
Our initial successes were in the PTO. In 1977, we obtained the allowance of U.S. Patent No. 4,053,845, directed to optically pumped laser amplifiers, such as those which employ rubies and dyes. Two years later, we obtained the allowance of U.S. Patent No. 4,161,436, which is directed to methods of energizing material utilizing amplified (i.e., laser) collimated light.
The first litigation which we took to trial resulted in a complete victory. Mr. Gould's '845 patent was held valid and infringed. Gould v. General Photonics Corp., 534 F. Supp. 399 (N.D. Cal. 1982). (Although that defendant was then granted a license under the '845 patent, it ultimately defaulted, resulting in our obtaining an injunction which put the company out of business. Gould v. General Photonics Corp., 230 U.S.P.Q. 706 (N. D. Cal. 1986).)
Our initial success in 1982 in sustaining the '845 patent energized the laser industry to oppose Mr. Gould even more, and it also prompted vigorous opposition from the PTO itself in connection with Mr. Gould's continuing efforts to obtain further patents. Arguing that the prior 1973 decision precluded Mr. Gould from obtaining any valid patents on any laser invention, the PTO initially focused its efforts on Mr. Gould's patent application directed to gas discharge laser amplifiers (such as helium neon and carbon dioxide lasers). In 1982, the PTO actually convinced a District Court that Mr. Gould was so precluded. However, we successfully argued on appeal that collateral estoppel was simply inapplicable to Gould's then-pending application, and that Mr. Gould was entitled to a trial on the merits. Gould v. Mossinghoff, 711 F.2d 396 (D.C. Cir. 1983). In retrospect, it is now clear that this 1983 decision was the beginning of the end for Gould's adversaries.
In 1985, our firm got Mr. Gould his day in court as to whether he was entitled to a patent on the gas discharge laser amplifier. After a non jury trial, the District Court in Washington, DC held that he was. Gould v. Mossinghoff, 229 U.S.P.Q. 1 (D.D.C. 1985). In an appeal that we successfully defended, the District Court's decision on the merits was upheld by the Court of Appeals for the Federal Circuit. Gould v. Mossinghoff, 822 F.2d 1074 (Fed. Cir. 1987). Later that year, Mr. Gould was awarded U.S. Patent No. 4,704,583.
Vindicating Mr. Gould's other patents proved equally challenging. In 1982, when Mr. Gould was still facing potentially devastating arguments of collateral estoppel, his adversaries initiated reexamination proceedings as to Mr. Gould's two issued patents, the '845 and '436 patents. At various times, all claims of these patents were under rejection on numerous grounds, all of which we considered legally improper, technically baseless, or both. After several years of reexamination proceedings, the patents finally came before the PTO Board of Patent Appeals and Interferences. In 1986, the Board overturned each and every rejection lodged against the '845 patent, and confirmed its patentability. Ex parte Gould, 231 U.S.P.Q. 943 (Bd. Pat. App. & Intf. 1986).
With regard to Mr. Gould's '436 patent, the Board reversed every rejection but one, and we sought review in a civil action before the U.S. District Court in Washington, where we promptly obtained summary judgment against the Government. Patlex Corp. v. Quigg, 680 F. Supp. 33 (D.D.C. 1988). This time, however, the PTO chose not to appeal.
Throughout the foregoing proceedings, Gould continued to pursue yet another application directed to a polarizing apparatus using an optical element inclined at Brewster's Angle. The Board had initially rejected Gould's application, and we commenced an appeal to the Court of Customs and Patent Appeals (predecessor of the Federal Circuit). In 1982, the PTO had convinced the Court to remand the case to the PTO for further examination, on the representation that there were still further rejections that should be made.
After several years of proceedings before an Examiner, Mr. Gould's Brewster's Angle polarizer application was again before the Board, with all of the prior rejections plus several others. This time, the result was different. After we briefed and argued the appeal, the Board reversed every rejection. Ex parte Gould, 6 U.S.P.Q.2d 1680 (Bd. Pat. App. & Intf. 1987). In 1988, Mr. Gould was issued U.S. Patent No. 4,746,201 on his Brewster's Angle polarizer.
Today, few companies would consider challenging the Gould patents, given their extraordinary history. To date, none have seriously tried, and the Gould patents have been licensed to the entire laser industry. Since certain of Mr. Gould's patents did not issue until the late 1980s, they will be in force well into the 21st century, more than four decades after Gould made his inventions.
The financial rewards to Mr. Gould and those who supported him are obvious. Thus, our firm will always be especially proud of its role in establishing Gordon Gould's rightful place among the pioneers of laser technology.