Volume 22, Number 4 October 1993

ARTICLES

The American Physical Society and the practice of physics are affected by the structure and practices of the American legal system. The legal community, which is increasingly involved in disputes centering on scientific issues, has little understanding of those issues or of the structure and practices of the scientific community. In this symposium physicists who also have developed legal careers described some of the effects of the legal system on the practice of physics, and suggested that closer interactions between lawyers and physicists should benefit both communities as well as the nation. This symposium was an invited session, sponsored by the Forum on Physics and Society, held at the APS meeting in Washington, DC, on 14 April 1993. Physics and Society presents here three of the four talks given at that symposium. We were not able to obtain a written version of the fourth talk, "Representation of the American Physical Society," given by Richard A. Meserve.

Legal Review Versus Peer Review

Lawrence Cranberg

An important but little-noticed feature of the 17th-century scientific revolution was the emergence of the peer review system of conflict resolution in the global community of scientists. Peer review was a radical departure from prior systems of conflict resolution which depended on long-established civil and ecclesiastical courts and legal systems. The trial of Galileo in an ecclesiastical court on a scientific question is a classic and dramatic example of the confrontation of those two systems that continues to this day with ever-increasing intensity, and with no end in sight. Peter Huber's important recent book (1) spells out important aspects of the conflict. As recently as two weeks ago the problem of law-science interaction surfaced in the US Supreme Court and on the front pages of the press in the case of Daubert v. Merrill Dow Pharmaceuticals Inc. on questions of drug effects.

In a 1968 article (2), I emphasized the similarities between the two systems of law. Here I shall emphasize the differences. There are many, but for present purposes two differences stand out. Legal systems are geographically variable and time-limited by statues of limitations, while peer review, at least in principle, is global and forever. Legal systems formally bury their mistakes; our global scientific system never does, and therefore truth, despite temporary setbacks, must eventually emerge victorious.

It is tempting, speaking from a physics platform, to be scornful of the scientific illiteracy of lawyers and judges. But to do that would fail to apportion fairly the responsibility for the conflicts existing between our scientific and legal systems. Rather I prefer to look at both systems on the basis of my experience and suggest how they could interact more harmoniously and be improved.

The two major law suits in which I acted pro se and sought to resolve matters of social and scientific importance involved actions in federal courts against Consumers Union and the US Postal Service (3). Two will seem to be a very small number from which to draw useful conclusions. But it is an indication of the unpredictability of our courts that in those two suits I came in close contact with five federal district judges, and only on appeal did I encounter the normal three appellate judges.

In addition, my grasp of the situation in our courts has been enhanced by a brief but comprehensive, little-known 1983 landmark study (4). This work deserves to be much more widely known both for its elegant methodology and its conclusions, and I strongly recommend it to this audience. It documents more convincingly than anything I have seen the intrusion of partisan politics and the deterioration of the quality of justice in the federal courts whose beginning has been found to coincide with the administration of President Johnson. Thus I speak not from the seemingly meager base of two law suits, but from personal experience with eight judges and the published results of a study of tens of thousands of cases. I can also claim general support from important observations of US Chief Justice Burger (5), and support on a key proposal from the eminent legal scholar Professor Michael E. Tigar (6).

I won no judgments and paid heavy costs, but gained extremely rewarding experiences, as I will try to show, concerning promising policy recommendations. Both suits involved important science-society interactions. The suit against Consumers Union involved life-and-death issues of fire safety in the home and efficient use of wood fuel. The postal suit involved the Postal Service's hostile policies toward innovation and peer review.

The suit against Consumers Union might never have been litigated if the issues had been addressed by an American Physical Society committee using the methods APS has used to deal with nuclear reactor safety. The suit was filed after the refusal of an APS committee to review the issues. So the fault, in my opinion, started here among us, and remains to be redressed among us by a suitable committee. We must take a broader view of our responsibility to deal with physics-and-society issues, and not pass them to our court system. The courts are so heavily burdened that the issues I tried to present to the US Supreme Court in 1985 never reached that court, which takes less than one-half of one-percent of the cases that come to it on appeal. Hence those issues, some of wide scientific and judicial significance, remain unresolved and demand APS attention.

Lawyers will tell you that I had my day in court and what the Court of Appeals rules is final. But if you listened to what Chief Justice Burger had to say in Miami in 1985, and was almost completely ignored in the press, we are at risk, in his words, of "anarchy in the law" because the 13 appellate jurisdictions have little likelihood of being called to account and are free to indulge their individual idiosyncrasies. In my case the idiosyncrasies included an acceptance of judicial discretion by the district court so broad as to effectively destroy meaningful due process. It included express willingness to believe that senior scientists of established reputation will lie to support one another out of collegial loyalty, while journalists of a younger generation will do no such thing. Another idiosyncrasy of judges in my experience is to believe, from press reports, that domestic fires, in use in cold weather before the dawn of history, are refrigerators of an interior space and not heat sources. Another idiosyncrasy is that testimony of world-class, volunteer expert witnesses on decisive advances in fire safety and energy efficiency in domestic heating techniques and appliances can be ignored.

In the years the Consumers Union case was pending in the courts and issues of fire safety were being utterly ignored, an average of one thousand children under the age of five perished annually in home fires. This is a figure far greater than the number of fatalities due to all sources of childhood immunizable disease, about which there is so much solicitous attention these days. The courts are by no means the only nor the most threatening arena in which junk science is a threat to society. For example, one of our most brilliant scientific industries--the pharmaceutical industry--is being irresponsibly pilloried, and the future of our golden age of medicine is being threatened by politicians who know neither medicine nor economics.

Equally remarkable, I learned, is judicial belief about how to determine the credibility of witness testimony--a problem that may be as old as Adam and Eve. Current practice is that a judge determines truthfulness by observing a witness's "demeanor" on the witness stand--a practice I call Demeanorology. The evidence for demeanorology is on a par with that for palm-reading or astrology. By contrast the evidence of 80 years of experience with the polygraph is discarded. Yet since the days of Pavlov, what one may call the psychophysiological hypothesis that intimate physiological data are clues to psychic states that are inferable by experienced specialists, has stood the test of time. To be sure any method is fallible, but I have yet to see a study that compares polygraphy with demeanorology. Instead there is a dismaying tendency to scapegoat the polygraph that leaves a clear field for continuing exercises in judicial demeanorology. On this tercentenary of the Salem witchcraft trials, I am loathe to believe that demeanorology has any more basis in truth than demonology. Claims of truly fundamental progress in our courts since Salem are open to serious question. Demons have been banished from courts not by more discerning judges but by scientific advance that will not tolerate such nonsense. Yet the pseudoscientific nonsense of demeanorology persists from long before Salem to this day.

I promised that I would focus not on fault-finding but on remedies. My next proposal may seem far afield from physics, but I shall urge it here anyway because one of our colleagues played a key role a decade ago in targeting the polygraph as inaccurate, thereby leaving the field to demeanorology. The situation calls for critical review by peers who are not looking for scapegoats but for the best methods of truth determination modern science and technology afford. How can we continue to tolerate methods of truth determination that were contemporary with Adam and Eve and that demean the courts in a scientific age?

My third proposal is intended to build a permanent communication bridge between the scientific and legal communities by the appointment of science clerks to judges. Whereas now the clerks are all trained only in law and people with a scientific outlook never intrude in judicial chambers, those chambers would be enriched by contact with scientists. This idea is not as radical as it may seem, and has been carefully evaluated by a distinguished lawyer and legal scholar, Michael E. Tigar of the University of Texas School of Law. He has given it his blessing in writing, with abundant citations from the law, as entirely consistent with existing law. It requires only a personal choice by a judge to implement the proposal. I hope Chief Justice Rehnquist, who recently publicly deplored his lack of a Ph.D. in science, will make a start.

Science clerks for judges would open fascinating careers initially to at least 100 science-trained men and women, and would produce many benefits. It would place a source of science learning and outlook at the elbow of any judge who wanted it, and would dispel all-too-popular "mad scientist" myths. Not only might we expect decisions more in keeping with scientific knowledge than with junk science, but one might hope that scientific culture in a judge's chambers might encourage a more judicious weighing of evidence, and less shooting from the hip by prejudging cases before trial.

Looking downstream at the careers of science clerks, we might expect some of them, with or without formal legal training, to take their own place on the bench and fuse the cultures of science and law. That development, in my view, would truly be Galileo's revenge, but would go beyond mere vengeance or vindication for science. It would represent an important step in assimilation of the scientific revolution into western culture. It would be an important bridging the two cultures gap about which Charles Snow wrote despairingly but with great discernment 30 years ago.

Appointment of science clerks to judges--would represent an important step in assimilation of the scientific revolution into western culture

Galileo represented himself in court, and I urge the importance of that precedent. However I would be happier, if I were to appear again in a court, if it were before a judge who was assisted by a science clerk. Otherwise one is likely to appear before someone who avoided physics at college, or who had a humiliating encounter and who takes revenge from the bench. One unforgettable experience at the hands of such a judge was interrupted by the judge in these words when I started to define energy efficiency: "You guys only make things more difficult." How would "you guys" out there in this audience like to appear before such a judge?

To be sure there are honorable exceptions to what appears to be a rule that judges--like many ordinary people--fear physics and physicists. In one instance I had the good fortune to encounter a judge with training and experience as a patent lawyer. Judge Robert M. M. Seto conducted a 15-day trial that was a model of fairness, and taught me most of what I know of the federal rules of civil procedure. We need more judges like him.

Finally, I want to conclude this talk with a special tribute to Galileo Galilei. After condemnation for heresy by the Inquisition and house arrest for the last 8 years of his life, biographers tell us that Galileo continued his scientific and literary activity with memorable ardor and creativity. Let me suggest that Galileo should be remembered in addition by historians of western civilization for what I would like to call the "Galileo principle" that science is autonomous and its authority is independent of external authority external be it political, religious or whatever.

In establishing the Galileo principle some would say that Galileo won a moral victory in the court. Let me suggest an alternative to "moral victory," a term which often has a flavor of sour grapes. I renew an earlier proposal that we adopt the term "Galileo victory," which has a ring of robust, not anemic or ersatz victory. And finally, let me wish to my colleagues in the scientific community who go to court to vindicate scientific principle, that whatever an unsympathetic judge may rule, "you guys" (and gals) will emerge, however delayed, with a triumphant Galileo victory in the noble cause of the Galileo principle.

1.	P.W. Huber, GalileoUs Revenge:  Junk Science in the Courtroom, 
	Basic Books, 1991.
2.	L. Cranberg, American Scientist  56, 244 (1968).  See also Southern 
	Humanities Review  1, 30 (1967).
3.	Cranberg V. Consumers Union, 5th Circuit, 1985, Case No. 83-1912; 
	Cranberg V. U.S. Federal Circuit, Case No. 90-5077, unpublished.
4.	Robert E. Carp, C. K. Rowland, Politics and Policy-Making in the 
	Federal District Courts, University of Tennessee Press, 1983.  See 
	review by R.A. Brisbin, Judicature 67, 200 (1983).
5.	Tom Fiedler, "Court's caseload risks anarchy in the law, publishers 
	are told," Miami Herald, p. 17A, 8 May 1985.
6.	M.E. Tigar, private communication, 29 October 1991.

The author is a consulting physicist and an APS Fellow residing at 1205 Constant Springs Drive, Austin, TX 78746

The American Physical Society and the practice of physics are affected by the structure and practices of the American legal system. The legal community, which is increasingly involved in disputes centering on scientific issues, has little understanding of those issues or of the structure and practices of the scientific community. In this symposium physicists who also have developed legal careers described some of the effects of the legal system on the practice of physics, and suggested that closer interactions between lawyers and physicists should benefit both communities as well as the nation. This symposium was an invited session, sponsored by the Forum on Physics and Society, held at the APS meeting in Washington, DC, on 14 April 1993. Physics and Society presents here three of the four talks given at that symposium. We were not able to obtain a written version of the fourth talk, "Representation of the American Physical Society," given by Richard A. Meserve.

Improving Courtroom Presentations of Scientific Evidence

Edward Gerjuoy

[This article is a condensation of the originally delivered paper which, including citations omitted here, is obtainable from the author.]

Scientists and lawyers have long expressed increasing concern about courtroom presentations of scientific and technological testimony, which characteristically involve experts hired by the adversaries and offering diametrically opposed opinions. It is widely believed that judges and juries are often quite unable to soundly evaluate the reliability of such testimony, even after each testifying expert has been cross examined by opposing legal counsel. Nonetheless, according to a 1992 story in US News & World Reports, scientific evidence is now used in nearly 30 % of all court cases and the demand for scientific expert testimony has tripled in the past decade, so that scientists now make some 400,000 trips every year to depositions, briefings, and courtrooms. This paper addresses some of the issues connected with this courtroom use of scientific evidence, especially those of interest to physicists and the APS.

Is scientific evidence is being misused: anecdotes.

These issues raise a preliminary question: Is it true that scientific evidence is being misused in the courtroom? Unfortunately I know of no studies of this question. On the other hand, there is considerable anecdotal evidence to support the proposition that scientifically unsophisticated judges and juries generally are unable to cope with the outrageously bad scientific testimony that incompetent or even corrupt scientific experts all-too-frequently offer.

Here is one anecdote, from my own experience. The very first case in which I cross-examined an opposing expert witness involved the Wheeling-Pittsburgh Steel Company's 1975 appeal of the state government's refusal to relax the Pennsylvania limits on smoke fume emissions from the company's coke plant. Coke plant technology was then, and remains now, antediluvian; for my present purposes it suffices to state that coke plants have ovens, that these ovens have doors which almost always leak polluting fumes into the atmosphere, and that the amount of objectionable particulate matter in these fumes customarily is measured by the attenuation of light passing through the fumes. The company wanted the witness, who shall be nameless, to testify as a scientific expert on optical propagation through particulate-containing fumes. I was representing Pennsylvania.

The witness had been allowed to present expert testimony in his chosen subject area many times previously, even though his predominant work experience and education had been not as a physicist or even as an atmospheric scientist, but rather as merely a conventional meteorologist predicting the weather. His resume, though long on his past work experience and his many previous court appearances as an expert, was notably sparse on his past scientific accomplishments, especially his accomplishments in fields related to optical propagation through anything. Even more noteworthy was the resume's proud statement, under the heading "Professional Recognition," that the witness was a member of the American Association for the Advancement of Science. I decided, therefore, to question the witness about his qualifications. When I got him to admit shamefacedly that purchasing a subscription to Science was all it took to become a member of the AAAS, the courtroom was engulfed by an almost palpable stir, to which the hearing examiner and all the other lawyers in the room contributed. Obviously, except for myself not one of the attorneys present, on the bench or on either party's side, had ever heard of the AAAS or its journal Science.

Despite this down-grading of the witness's professional recognition, the hearing examiner, who was a law professor, permitted him to testify as an expert. After his direct testimony, wherein all his offered opinions were totally favorable to the company's position, I began my cross examination by trying to find out what calculations he had performed in arriving at those opinions. In response to my questions he said that he was acquainted with the theory of light scattering by small particles, and in fact had worked through the theory. He didn't know that this theory, for spherical particles anyway, is known as Mie theory or Mie scattering, but this deficiency was hardly significant.

However his answer to my next question did display a serious deficiency. When I asked him what equations he had used in working through the theory, he said "the Schrodinger equation." I emphasize that this answer, unlike his previously-discussed answer to my question about how he had achieved AAAS membership, drew no reaction whatsoever from the audience. In other words, excepting myself once again, no one in the courtroom realized that answering "the Schrodinger equation" instead of "Maxwell's equations" was a howler which immediately revealed that the witness could not possibly have worked through the theory, and that consequently his testimony completely lacked credibility. The worst fact of all, from my point of view at the time, was that this just-described indifference extended to the expert witnesses who had been assembled to testify for the state. They were not much more knowledgeable about the theory of light scattering by small particles than the company's witness. In other words, although the proper interpretation of optical attenuation by particulate-containing fumes was one of the crucial issues in the appeal, I did not have available a single expert witness whose evidence, under oath, would have had a good chance of convincing the hearing examiner that the testimony by the company's expert witness was the pure garbage it was.

I don't want this anecdote to be my sole support for the thesis that courts generally are unable to cope with bad scientific testimony, but because of space limitations I must confine myself to just a few additional anecdotes, presented in much less detail. While preparing this paper I thought I would look at some court decisions concerning x-ray radiation hazards. Almost the first judicial opinion I found on this subject, written in 1979, contained this statement: "The defendant conceded at oral argument before this court that an x-ray, or x-radiation, is derived from and composed of -- electricity."

Arthur Damask, a physicist who frequently testifies in automobile accident cases, tells the following sad story in a 1987 paper about accident reconstruction published in Physics Today. In one of his cases, after having testified convincingly and dispositively, as he thought, he went home, only to find out later that his side actually had lost. Apparently the other side's lawyer was allowed to tell the jury that "the laws of physics are obeyed in the laboratory, but not in rural New Jersey."

Because this paper's main audience is physicists, the foregoing anecdotes have been confined to cases illustrating courtroom misunderstanding of physical science. Similarly illustrative anecdotes involving other scientific fields readily could have been given. Many such anecdotes can be found in Peter Huber's 1991 book titled "Galileo's Revenge: Junk Science in the Courtroom." Huber is a Ph.D. engineer as well as a lawyer. It is distinctly less easy, although by no means rare, to find or hear about cases where use of scientific evidence has been exemplary. In sum, despite the absence of reliable studies it is reasonable to conclude that to a significant extent scientific evidence is being misused in the courtroom.

Does this issue deserve attention from physicists?

There remains a second preliminary question: Aside from the fact that physicists, as good citizens, typically have a general interest in societal issues, does the courtroom use of scientific evidence deserve any special attention from physicists? I also answer this question affirmatively, although once again I can't cite conclusive facts. Admittedly most of the scientific testimony that is offered in US courts involves matters that are only indirectly related to physics, for example medical diagnoses, blood typing, chemical testing, and epidemiology.

On the other hand perusal of legal literature discloses many classes of disputes, occasionally having important public policy implications, wherein physics testimony is likely to be decisive. Examples include the environmental, x-ray, and automobile accident classes represented in the anecdotes discussed earlier. Other examples, which may be between individuals or between individuals and a governmental agency, include:

1. the health hazards of nuclear radiation, for instance a claim that exposure to Nevada Test Site emissions caused multiple myeloma;

2. highly publicized recent claims that low-frequency power lines induce cancer, a subject that has been addressed in the Physical Review by Yale Professor Robert Adair;

3. nuclear reactor licensing disputes;

4. patent infringement cases of various sorts, often involving quite subtle physics;

5/ and the forensic laboratories that are the backbone of modern criminal prosecutions are employing ever more sophisticated laboratory procedures, including physical science techniques such as voice print identification, neutron activation, infrared spectrophotometry, nuclear magnetic resonance, mass spectrometry and scanning electron microscopy.

Proposals for improving courtroom use of scientific evidence

I turn therefore to proposals for dealing with the problem posed by the courtroom misuse of scientific evidence. One suggested solution, urged in the past by many American legal scholars, is abolition of jury trials. After all, only a few countries outside the orbit of Anglo-Saxon law have retained the jury, defined as an assembly of lay persons who reach a verdict without the direct participation of judges learned in the law.

Another even more radical proposal is to replace both judges and juries by scientists. This recommendation is the principal feature of the so-called "science court," as proposed about 20 years ago by Arthur Kantrowitz, a physicist and former chief executive of the AVCO-Everett Laboratory. Whenever the parties to a legal dispute could not agree on the correct scientific facts, the dispute was to be referred to a science court for determination of those "correct" facts via open adversarial hearings, conducted by scientists in front of a scientific jury. With this referral procedure, according to Kantrowitz, the laymen jurors in the original dispute assuredly would get the correct scientific facts, and they then (after taking into account the judge's instructions on the law) would be able to decide the dispute the way a lay jury is competent to do, namely on the basis of the jurors' social values applied to those facts.

Although in the past both jury abolition and the science court have had their adherents, these proposals have little support at present.

During the last decade, however, there has been increasing support for the belief that the problems of the American justice system are rooted in its strong reliance on adversarial trials. It has been proposed, therefore, that the justice system should incorporate procedures that will encourage parties to negotiate resolutions of their disputes, with an adversarial trial only the very last resort. The term "Alternative Dispute Resolution" (ADR) is used to describe all such settlement-encouraging procedures, which come in a variety of forms that I do not have the space to describe. The proponents of ADR argue that especially in disputes involving complicated scientific issues, such as environmental disputes, the parties themselves are more able to arrive at a fair resolution than can any judge or jury. I however do not see why ADR--wherein the parties still furnish their own experts who may or may not be first class--generally should enable the parties to reach a more correct resolution of their scientific controversy than a conventional jury trial would.

In my view, the proposals I have described above have a fundamental flaw which, irrespective of their merits, makes their wide adoption unlikely. Such proposals simply represent too radical a departure from traditional trial procedures. Consequently I will close this paper with descriptions of a few proposals that are not radical and that have attracted considerable support from legal scholars and practitioners. I judge that many or all of these proposals have a good chance of being adopted in the near future, and of actually improving the courtroom use of scientific evidence.

A non-radical proposal: peer review

One set of such proposals seeks to tighten the rules governing the admissibility of scientific evidence, to make it easier for judges to exclude so-called "junk science". This notion of improving the courtroom use of scientific evidence via changes in the admissibility rules has received wide publicity during the past year, because the Supreme Court, in the case of Daubert v. Merrell Dow Pharmaceuticals, has agreed to consider what restrictions (if any) should be placed on a judge's powers to exclude scientific testimony that a party seeks to present. In this case, the plaintiff is a child born with a birth defect allegedly caused by the child's mother's use, during pregnancy, of an anti-nausea drug called Bendectin. The plaintiff sought to prove this allegation via the testimony of several experts who relied on their unpublished studies, even though the published scientific literature overwhelmingly supported the thesis that Bendectin does not cause birth defects. The federal district court judge refused to allow the plaintiff's evidence because it had not been subjected to any sort of peer review. It is this ruling, which was upheld by the Court of Appeals, that now is before the Supreme Court (1).

The Daubert ruling that the scientific evidence was inadmissible because it had not been subjected to peer review goes far beyond present admissibility restrictions. In effect, the Daubert ruling is asserting that without peer review the reliability of scientific evidence cannot be assured. For the most part, but by no means universally, scientists have lined up behind the Daubert ruling. The AAAS and the National Academy have even presented the Supreme Court with an amicus brief in support of the lower court's opinion. On the other hand a number of prominent epidemiologists and other scientists, including Stephen Jay Gould, have criticized the lower court's "blind deference" to peer review, and have urged the Supreme Court to uphold the present principle that the jury should be allowed to weigh essentially all relevant evidence.

My own view is that if the choice has to be between the present liberality and the Daubert rule, I would favor upholding Daubert, but I am not at all sure that the Daubert rule's seemingly inflexible reliance on peer review is well thought out. In the first place, there may be many circumstances wherein a competent expert will find it convenient to analyse data in an unorthodox but nevertheless quite valid fashion. The Daubert ruling would not allow such an expert to testify concerning his or her analysis unless the analysis was worth publishing in a reputable scientific journal, which probably rarely would be the case.

In the second place, uncritical reliance on peer review implies an uncritical faith in the scientific quality of the peer reviewers. During my tenure as an administrative law judge, I once actually had to rule on the admissibility of expert testimony offered by a dowser. I refused to admit the testimony, but I might have been hard-pressed to do so if my decision had to be based on the Daubert rule. Dowsers have a professional organization, the American Society of Dowsers, which has 68 local chapters and holds an annual conference that, in 1989, lasted five days. If my would-be dowser witness had been asked to produce peer dowser support, I am sure he could have done so.

Another non-radical proposal: court-appointed experts

The last proposal I want to discuss is designed to improve the quality of the testifying experts. Various legal commentators have pointed out that under the federal rules and the rules of most states, the judge is empowered to call court-appointed expert witnesses to the stand, to testify on disputed scientific issues without the onus or bias of having been hired by one of the contesting sides. Each side still could call its own experts, and would be free to fully cross-examine the court-appointed witnesses. It is believed that this proposal should greatly increase the willingness of competent scientists to give courtroom testimony, since a court-appointed witness does not risk being regarded as a hired gun." Nevertheless, court-appointed witnesses have been used only sparingly in the past, primarily because a judge handling a case normally has neither the competence nor the time to ferret out a reliable expert in any specialized scientific field that might be relevant to the case.

It has been suggested, therefore, that the Federal Judicial Center, which Congress has established to improve the operation of the federal courts, should hire scientists who could assist judges to find experts willing to serve as court-appointed witnesses. Presumably these Judicial Center scientists, after receiving a cry for help from a judge who expected to be confronted with conflicting scientific testimony, would be knowledgeable enough to know what sort of specialists were required and in what professional societies they might be found. Thus suitable inquiries by the Judicial Center scientists to the appropriate scientific societies might provide a practical means of locating needed court-appointed witnesses. For this scheme to work, however, the scientific societies would have to cooperate with the Federal Judicial Center, for instance by maintaining lists of member scientists who were competent and were willing to accept court-appointment in various specialized fields.

There is reason to believe that the Federal Judicial Center will accept this responsibility of finding needed expert witnesses, on an experimental basis at least. It is my hope that the APS and its members will be willing to cooperate with such efforts to locate reliable physicist experts, whether by the Federal Judicial Center or by some other designated agency. The APS also should consider promulgating a code of ethics for APS members who testify as expert witnesses, whether for a party or for the court. The National Academy of Forensic Engineers already has promulgated such a code, as have other professional societies. For instance, the Forensic Engineers code states, "The expert should refuse or terminate involvement in an engagement when fee is used in an attempt to compromise the expert's judgment."

1. After this paper was sent to Physics and Society the Supreme Court issued its ruling on the Daubert case. See Science , 2 July 1993, page 22.

The author holds both a physic PhD and a Doctor of Laws degree. He is presently Professor of Physics Emeritus, University of Pittsburgh, Pittsburgh, PA 15260, and "of counsel" to a Pittsburgh law firm.

The American Physical Society and the practice of physics are affected by the structure and practices of the American legal system. The legal community, which is increasingly involved in disputes centering on scientific issues, has little understanding of those issues or of the structure and practices of the scientific community. In this symposium physicists who also have developed legal careers described some of the effects of the legal system on the practice of physics, and suggested that closer interactions between lawyers and physicists should benefit both communities as well as the nation. This symposium was an invited session, sponsored by the Forum on Physics and Society, held at the APS meeting in Washington, DC, on 14 April 1993. Physics and Society presents here three of the four talks given at that symposium. We were not able to obtain a written version of the fourth talk, "Representation of the American Physical Society," given by Richard A. Meserve.

The Interface Between Physics and Patents: Theories, Facts and Frictions

Francis H. Lewis

[This essay is a drastically abridged version of a longer paper. The reader is invited to contact the author for the longer, and hopefully more coherent and readable, version. This article is copyrighted, 1993.]

When one mixes one or more lawyers with a roomful of scientists, a spontaneous exothermic oratorical reaction nearly always occurs (especially when catalyzed with alcohol), producing much rhetoric beyond the usual lawyer jokes. What makes these discussions so fascinating is that both species use the same words, words like proof, evidence, laws, and experts, but with entirely different meanings. For example, "truth" might seem to be a simple notion to a person of ecclesiastical outlook: Truth is revealed by the Almighty through divine inspiration, sometimes with the aid of God's Church. To a scientist, however, truth is discovered by observation and analysis, reinforced by corroboration by other scientists, and abstracted from emotion and other non-observational forces. Lawyers think of "truth" as something hammered out in the crucible of zealous advocacy before an impartial adjudicator. Clearly these are three different concepts riding on the same term.

These differences in language are not merely semantic, but are born of differences in attitude and philosophy. For example, lawyers often define themselves as people who "think like lawyers." To a lawyer, this is perfectly understandable. To a scientist it is an illogical tautology.

This difference in attitude toward logic is one factor that instills confusion and mistrust in scientists who encounter the legal system. Scientists use logic as a tool to arrive at new findings. Logic in the legal system is rather a means for organizing and systematizing already-found results. To quote one commentator: "The law, of course, never succeeds in becoming a completely deductive system. It does not even succeed in becoming completely consistent. But the effort to assume the form of a deductive system underlies all constructive legal scholarship" (1).

Another example of philosophical differences is attitudes toward problem-solving. Scientists (2) seek to answer questions about the world. While the questions asked are ever-changing and occasionally ambiguous, the answers are enduring and specific. Through rigorous use of logic, the answers can be organized to yield "laws of nature."

Lawyers solve problems too, but from a completely different point of view. Lawyers think of "laws" as ever-changing and ambiguous creations conjured up by legislatures and courts. The focus is rather on the questions, which endure over the years, immune to politics and social change. Basic terms such as "due process of law," or "jurisdiction," really denote questions that always arise in addressing legal problems: What is fair? What are the limits of a tribunal's power?

Keeping in mind these differences, we turn to the topic of this essay--the interface between physics and patents. Why would physicists want to know anything about patents? Answer: because the patent system is the mechanism provided in our legal structure, and those of most other developed nations, for rewarding researchers for their labors. Physicists may well wish to know what these rewards are and how to reap them.

New developments in patent laws

In years past, patents have been held in low esteem by many researchers. The commonly held view, supported by statistics, was that most litigated patents (about 80%) were held invalid by the courts. The usual perception has been that patents are expensive to obtain (since it often means hiring a lawyer), difficult and even more expensive to enforce (since it means hiring another lawyer to go to court), and therefore simply not worth the time, effort, and expense.

The situation has changed drastically over the past decade. Patents are now perceived to be more valuable to their owners. Ten years ago the Court of Appeals for the Federal Circuit was created and given exclusive authority to decide all patent appeals. Furthermore, there continue to be major improvements in the patent laws themselves. We are seeing a definite trend toward vigorous enforcement of patent rights, and far fewer holdings of invalidity on microscopic technicalities. The result is that inventors, academic institutions and research organizations are much more aggressive about obtaining patents on new technologies.

This pro-inventor philosophy is partly the product of the American ethos. The lone inventor slaving away in the laboratory, who shouts "Eureka!" after years of selfless labor and sacrifice, is a kind of American folk hero. The Inventor's Hall of Fame in the US Patent and Trademark Office is lined with the icons of Edison, Marconi, de Forest, etc.

Recently the media have published several stories of inventors who have filed patent applications which have meandered through the Patent and Trademark Office (PTO) for a number of years, while large corporations have invested in similar technologies and developed and marketed products based on these innovations. When such a patent is finally issued, the inventor is then in a position to threaten the company with a patent infringement suit, and to be handsomely rewarded either in the form of royalties or in damages awarded by the court. This phenomenon has become so common that these patents are known as "submarine patents."

So to the physicist who is accustomed to a life of peonage, toiling like an indentured servant while his or her masters profit from the fruits of his or her labors, we bring good tidings. We have a patent system that works! In other words, scientists and engineers can receive major money for quality research.

There is a second piece of good news. Patent lawyers are not like "real lawyers." The suits and brief cases are part of a disguise. You can talk to patent lawyers about calibrating a detector or diagonalizing a matrix without getting the glazed look that such topics create at Sierra Club cell meetings. You can communicate with them as if they were normal people.

This means that patent lawyers are much easier to deal with than those other lawyers. Even though they have wing-tip shoes, blow-dried hair, and offices in bank buildings, they secretly yearn for acceptance. Treat them kindly. When you are introduced to them, don't just throw your preprints at them and abandon them to fend for themselves. Take them to your lab and show them the raw data, let them twiddle some knobs, invite them to your in-group coffee sessions. Let them get excited over your scoop. In fact, some patent attorneys get so enthusiastic that they become co-inventors.

Problem areas in PTO practice

Patent examiners are modern day heroes of a unique sort. The patent examining corps is a linchpin of the whole system. Every working day the patent examiner is called upon to make evaluations and decisions at the interface between law and technology, and to cope with the conflicts in philosophy that we have considered above. Patent examiners regularly perform literature searches on a mind-boggling database.

When new technologies are created, the patent searches for the first applications are difficult because the classification of the prior art does not yet have the guidelines that facilitate searches on more mature technologies. Often the only relevant literature is whatever has been published in the research journals, and these are not noted for their readability and searchability from the patent application standpoint.

Recent advances in technology have highlighted this issue. Some of the earlier patents on high temperature superconductors included citation of references considered by the examiner that some researchers might regard as unusual. Computer software was generally thought to be unpatentable until a few years ago after some significant court decisions. As a result, it is often difficult to perform a patent search for software patent applications because there is a very large amount of prior art that is not not patented, and thus not organized to facilitate these searches.

The PTO is constantly striving to keep examiners abreast of new technologies, and actively solicits the assistance of outside institutions and individuals. The Software Patent Institute has been formed to organize computer software literature to facilitate patent searches. The PTO provides educational programs for examiners in new technologies as they develop.

The 16 March 1993 issue of the Official Gazette of the PTO announced an invitation to individuals and organizations to present technical seminars at the offices of the PTO in Arlington, Virginia, as part of the Examiner Education Program. The announcement states that the PTO is particularly interested in having seminars presented in the following areas: advanced computer architecture, heat resistant materials, artificial intelligence, neural networks, fuzzy logic biotechnology, imaging technologies and computer graphics, medical devices and diagnostics, semiconductors, superconductors, high-density data storage, high-performance computing optoelectronics, sensor technology, computer communications networks, massively parallel processing systems (mpp), reduced instruction set (risc) computers, database management systems, audio processing systems, object oriented programming, trends in software development compilers, integrated dissimilar computer systems, recent developments in computer emulation and simulation, agrochemicals, polymer technologies, pharmaceuticals, liquid crystals, nanostructured matter, membrane technology, high definition TV, telecommunications, conductive compositions.

These categories abound in basic physical phenomena. The PTO is asking for the assistance of the scientific research community, including physicists, in maintaining technical integrity.

Cold fusion: a case study

A few years ago the media were filled with reports about cold fusion. Because the commentary also included a substantial amount of patent lawyer-bashing, this story provides a good illustration of the clash in values between the scientific and legal communities.

In his book Too Hot to Handle: The Race for Cold Fusion , Dr. Frank Close describes the decision of the University of Utah to delay the submission of research results to scientific journals: "Getting in first with the patent application was what the university authorities regarded as the top priority" (p. 100). Describing the entire episode, Dr. Close comments: "The scientists at the center of the action became entrapped; patent attorneys and eventually legal issues seemed to play a central role" (324). Quoting Professor Martin Fleischmann: "The key is that we had written a number of patents by that stage and the view of the university was that we should announce this by a press conference. It was really the patents that were driving this" (329).

These criticisms of the role of the patent attorneys do not take into account the priorities that our legal system imposes on the exploitation of technological development. In the scientific community, peer review and independent verification of research results play an important part in maintaining the integrity of scientific discoveries. Scientific attitudes place a high value on a free exchange of ideas to foster research quality.

However, if research results are to be commercially exploited, the inventor or developer must call upon the patent system, with its different values. The patent laws of most countries, including the US, impose strict deadlines within which a patent application must be filed. If an invention is disclosed to others before the application is filed, certain patent rights may be lost. The loss of such rights can mean that the fruits of some discoveries may never be harnessed for useful purposes. If nobody can acquire patent rights in a new technology, it may be simply economically unfeasible to invest in this technology. In other words, there are strong pressures to encourage early filing of applications, before the research results have been independently verified.

Does this mean that the patent system totally disregards scientific integrity? In fact, the patent statutes provide that in order to obtain a patent, the invention must be "useful;" it must actually work as described in the patent. Furthermore, the patent statutes were amended in 1980 to provide for a reexamination procedure in the PTO, which is a kind of peer review of issued patents. Under this procedure, an issued patent can be attacked by anybody on grounds that it describes an invention that does not satisfy the usefulness criterion, and reexamined in the PTO.

But the real answer to this question goes back to the contrast in attitudes between the legal and scientific communities. Twenty years ago, who would have guessed that a certain type of material composed of yttrium, barium, copper and oxygen atoms arranged in a specific layered structure would have superconducting properties at high temperatures? In the scientific world, the rewards for such a discovery go to the researcher whose results are first verified by the independent investigations and confirmations of others. The legal system, however, gives priority to the researcher who carries out his investigations without telling anyone else, to the point where the discovery is "reduced to practice," and then files his patent application before disclosing his results to others. These rules are very strict, and they are absolutely necessary to allow the equitable allocation of legal rights in new technology.

Therefore, when a physicist comes rushing into my office, flushed with excitement, and announces that when he puts two electrodes into a beaker of heavy water and connects them to a battery he measures more energy emitted than absorbed, that at the same time his neutron counters and gamma detectors start clicking, and that his lab assistant noticed stray tritium atoms, my reaction will depend on whether I am thinking like a scientist or an attorney. If I am wearing my scientist's hat, I will first have to regain my self-control and stop rolling on the floor with laughter. Then I will tell my colleague to go back to the lab, recalibrate the detectors, add more shielding, and get the lab assistant's eyes examined. Next I will remind him of at least five textbooks that explain in impeccably logical detail why this phenomenon can't occur. Finally I will call his family and put the psychiatric paramedics on red alert.

On the other hand, if I am his patent attorney (3), I will first advise my wild-eyed physicist to tell this to absolutely no one until I instruct otherwise. Next I will cross-examine him as to what exactly he has measured, and force him to write down a complete account of what happened in the lab. Then we will draft a patent application, which he will read and sign after I have warned him that any falsehoods can lead to federal felony charges against him. Only after the application has been filed will I let him talk to the press and anybody else about his results. The point is that when a person swears under oath that he has observed this phenomenon of energy generation, that in itself is "proof" in the legal sense. The person is entitled to file a patent application based on his own experiences, and does not need the corroboration of his peers (although it can certainly help in some cases).

My thesis is that some of the criticisms that have been leveled at the patent profession in the accounts of the cold fusion saga are misplaced. These gentlemen are not trying to compromise the integrity of the research community. They are just doing their jobs. The confusion arises from the conflicts in philosophy between the legal and scientific communities.

Conclusions

For over twenty-five years the physics research community has suffered through an employment crisis. Almost every issue of Physics Today contains some comment about the tight job market. Responsible academic institutions now routinely warn entering graduate students in physics that upon graduation their reward will be membership in one of society's hard-core unemployable classes, unless they choose to learn some kind of viable trade like computer programming. This stigma used to be reserved for students in English, art history, and chemistry. We live in an egalitarian society in which there are no sacred professional cows.

One purpose of this essay is to call the reader's attention to a fresh wind that seems to be blowing stronger, called technology transfer: the process by which technological research is transformed into money, including money for researchers. The patent system is an intimate part of this process. Many academic institutions have come to realize that the process offers a way to realize financial rewards from the results of scientific research, and have established technology transfer offices. Some institutions are also giving financial awards to scientists as an incentive to participate in technology transfer programs. These programs did not exist twenty-five years ago.

The American Physical Society appears to be going through a transition phase, a period of self-examination and a search for new missions. It is believed that the technology transfer trend and patent developments offer new opportunities for the APS to revitalize the calling of its members. It will be interesting to see to what extent these opportunities are exploited.

1. Morris Cohen, Harvard Law Review vol. 29, p. 622-625 (1916).

2. "Scientist" is used here in its modern sense. For centuries, "science" was treated as co-extensive with its Latin root, which encompassed all knowledge. It was only in the middle of the 1800's that the term "scientist" began to be used to differentiate, from philosophers and intellectuals in general, those who used scientific methodology to find and explain regularities in nature. See Ross, Ann. of Sci. vol. 18, p. 65 (1962).

3. The "inventor's patent attorney" is not the same person as the patent attorney for the institution that employs him or her. Question: How can you tell when an attorney is representing your interests, rather than your employer's interests? Answer: When you have paid him or her.

The author has been an attorney for the past 18 years. He is in private law practice in San Mateo, California, specializing in technological cases and intellectual property law (patents, trademarks, and copyrights). Formerly he as a research physicist for 18 years. His address is 155 Bovet Road, Suite 400, San Mateo, CA 94402.