Rod Driver








From the Providence Journal, September 23, 1999

The patent that failed

ROD DRIVER

Second of two parts

In 1993 Seattle entrepreneur Bill Hones ran across a 10-year-old U.S. patent describing a device for levitating a spinning permanent magnet. Hones contacted Roy Harrigan, the inventor, to ask about it. Harrigan assured him that the magnet really does levitate. To prove it he sent Hones a videotape showing an actual working model.

But Hones, who had been trying for six years to levitate magnets, was skeptical. He thought there might be hidden strings or wires holding up the spinning magnetic top.

So in September 1993 Hones traveled to Vermont to see for himself. He quickly became a believer, and he spent two days with Harrigan learning about levitation, and hearing of some of Harrigan's other inventions. There is little room for doubt about what happened during those two days because Harrigan, having been burned in prior dealings with developers, videotaped their meetings.

Today, in the light of subsequent events, that videotape is a remarkable document. On the tape Hones says that, after years of unsuccessful efforts, only now -- thanks to Harrigan -- does he realize that a magnet might levitate if it is spinning. For a long time Hones practices under Harrigan's guidance until he finally gets the magnet to levitate. Then he talks enthusiastically about a partnership with Harrigan to produce and market the invention. He offers Harrigan 5 percent royalties - probably a fair offer. And he says that Harrigan's patent number 4,382,245 and a write-up about Harrigan will appear on every package.

But Hones was unable -- or unwilling -- to make even a $1,000 down payment, and Harrigan declined to sign a contract. Before leaving, Hones pressed Harrigan to lend him the prototype for further study. With the camcorder still running, Harrigan's working model was packed in a box for Hones to take back to Seattle. Hones assured Harrigan that "you don't have to worry about somebody disappearing in the night with it."

In the following months Bill's father, Ed Hones, used computers at the Los Alamos National Laboratory to study the prototype. Then he and Bill Hones made some minor changes in the design and got a patent in their own names. They entered into an agreement with a manufacturer in China to produce the "Levitron," and they marketed it as their own invention. Bill and Ed Hones sold as many as half a million of these levitation devices, giving Harrigan neither a penny in royalties nor a word of recognition!

In radio, TV and print interviews Bill Hones has told the audience -- or let someone else tell the audience -- that only after many years of failure did he discover the secret of spinning a magnet to levitate it.

In New Mexico, Mike and Karen Sherlock had established a business marketing "Levitrons." And they were producing an instructional video, featuring Bill Hones, to help their customers learn how to work the toy. During the taping in January 1996, Hones looked into the camcorder and declared "I am the inventor of the Levitron." He seemed to have come to believe his own fantasies. It is a shock to watch videotapes of Hones's performances in 1996 in comparison with the videotapes of his 1993 visit with Harrigan.

Later when the Sherlocks learned what had happened to Roy Harrigan, they were dismayed; and in August 1997, after confirming the story, they stopped selling the levitation device and explained why on their "levitron.com" web site.

Bill and Ed Hones responded with a lawsuit charging the Sherlocks with defamation and trademark infringement, and seeking to shut down the Web site. In April 1999, seeing how absurd their case was, Bill and Ed Hones withdrew the defamation complaint, leaving only the trademark-infringement charge. Despite abundant evidence that the term "levitron" was being broadly used generically, a federal judge ruled in July that the Sherlocks had to turn over their "levitron.com" Web site address to Hones. (The Sherlocks will soon re-post their story at another Web address.)

The Sherlocks want to continue marketing levitation devices, but they don't want to continue helping Bill and Ed Hones profit from the discovery. So, for two years, while defending themselves against the lawsuit, the Sherlocks tried to enter into a licensing agreement to produce and sell Roy Harrigan's invention. But Harrigan distrusted virtually everyone, including his own hard-working lawyer. So no agreement was reached.

But there will be new levitation devices on the market. It turns out that in 1984 an inventor in Delaware named Joseph Chieffo, who knew nothing of Roy Harrigan at the time, made the same remarkable discovery -- namely, it is possible to levitate a permanent magnet by spinning it.

Chieffo tried unsuccessfully to interest manufacturers in his invention. Then, in December 1988, he placed small classified ads in Popular Science and Popular Mechanics offering plans and parts to achieve "genuine free flight with ordinary magnets." The instruction booklet was only $5 postpaid, but the response was so poor that Chieffo soon canceled his ads. Just a handful of people had became aware of Chieffo's invention.

So today, having failed to make a deal with Harrigan, the Sherlocks are collaborating with Chieffo to produce alternatives to the Hones product, which they intend to market in May 2000 when Harrigan's patent expires. After hearing this story people wonder why Harrigan's patent didn't protect Harrigan's rights. The answer is a lesson for all patent holders: A patent only protects its owner as long as the owner enforces it.

Harrigan is a creative and ingenious inventor, but he is hopeless at pursuing business or legal problems. And he now distrusts anyone who tries to help him.

A further reason Harrigan failed to market his levitation device after 1983 was his preoccupation with another invention - a simple instrument about the size of a telephone handset for resuscitating victims of cardiac arrest. Harrigan keeps one of these nearby at all times, and wears it in a holster on his belt when he leaves the house. But that is a story for another article.

Rod Driver, an occassional contributor, is a professor of mathematics at the University of Rhode island and a former state representative.