The Other Nobel Prize Controversy

With the exception of avid technophiles, most people have no idea what these devices are. This is remarkable because the modern incarnation of the CCD is among the most ubiquitous electronic products today. Embedded in your camera, cell phone, and webcam, it is the conduit through which we capture images in digital form to be uploaded onto websites like YouTube and Facebook. It is the source of most, if not all, of the video traffic coursing through the Internet (by one estimate the amount of video data added per month in 2008 was close to nine “exabytes” (that’s 9 followed by 18 zeroes)).

The story of the CCD is interesting because it sheds light on how things actually work in large companies, especially those whose business is scientific innovation. According to Carlo Sequin, one of the individuals who worked on the CCD project, Boyle, Smith, and possibly Eugene Gordon, discovered the physical mechanism on the basis of which CCDs operate. However, they were not involved in the work that actually resulted in a working prototype of the modern CCD. As Sequin puts it, Boyle and Smith had provided the “seed” idea but that was about it. The person who most think should be credited with building the first practical CCD is another Bell Labs researcher, Michael Tompsett. Tompsett’s work built upon the seed idea and he eventually obtained a patent on the first practical CCD imager (U.S. Patent 4,085,456).

In our first-to-invent patent system an inventor is someone who has “contribute[d] to the conception” of the invention. In re Hardee [1]. It would appear from this definition that Boyle and Smith perhaps could have claimed invention of the CCD. But this would not have been enough; they would still have been required to show “possession” [2] of the invention, a measure of the concreteness of the invention. Vas-Cath v. Mahurkar. Unfortunately for Boyle and Smith, the invention was not sufficiently concrete to meet that standard at the point at which they handed off their idea.

Looking at the CCD project from the perspective of the U.S. patent system may not help us reward the person with the original insight but it does help to understand the pressures guiding inventors. Eugene Gordon, who used to work for Boyle and according to Carlo Sequin also contributed the original “seed” idea, recalls[3] with some bitterness how his suggestions for developing the CCD were sidelined by Boyle and Smith:

In late 1969 . . . I proposed work on the integrated circuit version of the imaging target. The obvious choice to work on it was George Smith, one of my department heads. I was a lab director at that time reporting to Boyle. I handed Smith the idea of . . . the initial CCD invention. Smith’s meeting with Boyle to discuss the [invention] was held without my knowledge and the two of them submitted it for patent, cutting me out secretly. As my boss, Boyle could get away with it.

The desire to withhold information or steal another’s would be less if inventors knew that such actions would neither hurt nor help their position in negotiating with the patent office.

As we move to harmonize our patent system with the rest of the world the Patent Reform Bill currently in Congress proposes moving from the first-to-invent to a first-to-file system. In this new system the patent will go to whoever manages to win the race to the patent office regardless of who was the first inventor.

Some lawmakers are concerned that large corporations will always beat the garage entrepreneur in such a race. But given the kind of resources needed to produce something relatively complex (e.g. a CCD), it should be self-evident that garage entrepreneurs are unlikely to ever sets up shop to compete in the same areas of innovation as a place like Bell Labs would (software, however, may be an exception). A first-to-file system may also reduce some of the distrust between inventors in large organizations because it would cut through much of the obfuscation that plagues the due diligence requirements[4] of the first-to-invent system.

So, given the way the invention seems to have been fumbled first by AT&T (that then used to run Bell Labs), and later other companies[5], how did the CCD eventually make it to the market? Ironically, it was first successfully commercialized in a country with a first-to-file system of patenting—Japanese researchers at Sony picked up the invention a few years after the American companies gave up on it. Notwithstanding the backstabbing that Boyle and Smith seemed to have been really good at, it still doesn’t seem right that their original insight be left unrecognized. From that point of view it looks like the folks in Stockholm got the award right (except, of course, they left out poor Gordon).

[1] 223 USPQ 1122, 1123 (Comm’r Pat. 1984)
[2] I like to think of the “possession” requirement as an authentication measure the patent office employs. When the applicant for a patent does not have a physical prototype the office requests a convincing description of the invention instead.
[3] See the October 12^th comment to the blog under the name of Eugene I. Gordon.
[4] Inventors are required show that they were “diligently” pursuing the invention in the period after they conceived the idea for the invention and before they reduced it to practice.
[5] A development contract was given to Fairchild Semiconductors, Texas Instruments, and the Record Company of America (now defunct) but never really went anywhere.