How Passion, Preparation, and Patents Brought Life-Changing Technology to Market
How did Flash Gordon, one “really great” physics teacher, famed tennis pro Arthur Ashe, and a leftover turkey dinner all factor into bringing us better eyesight? They each helped to lead Dr. James Wynne, Program Manager – Local Education Outreach at IBM, to his seminal discovery—in collaboration with his colleagues, Dr. Rangaswamy Srinivasan and Dr. Samuel E. Blum—that an excimer laser could be used to create clean cuts in tissue without causing collateral damage to surrounding healthy tissue. This invention, patented in 1988, claimed the foundational technology on which laser-assisted in-situ keratomileusis (LASIK) and photorefractive keratectomy (PRK) surgeries are based, and changed the quality of vision for millions of people worldwide.
Dr. Wynne, who was inducted into the National Inventors Hall of Fame in 2002, among numerous other honors, had been destined by his family to become a medical doctor. However, from a young age he was inspired by heroes such as Flash Gordon with a love of light beams and physics. He also had a penchant for playing with magnifying glasses, which further developed his interest in this realm of science. “That’s certainly how I became aware of the power of light, by playing with magnifying glass and setting things on fire,” says Dr. Wynne. Still, until he was about 16, he never questioned the wisdom of the adults around him that he should go to medical school—even though he could not imagine how his above average mathematical abilities would be put to use as a general physician. Luckily, in his senior year of high school, Dr. Wynne “had the world’s greatest teacher for high school physics and in just one week I realized that’s what I wanted to do.”
After his second year at Harvard University majoring in physics, Dr. Wynne returned home to Great Neck, Long Island in New York, where he spent the summer playing in local tennis tournaments. This particular summer, he happened to come up against future world-class tennis champion Arthur Ashe and “was beaten very, very, very badly.” The loss inspired him to find a new job the following summer, which brought him to private research company, Technical Research Group (TRG), working on projects inspired by Gordon Gould, who is widely recognized as the inventor of the laser. His summer at TRG convinced him that he should apply to graduate school for physics, rather than medical school—a decision he made without asking his parents. “That was the summer I grew up,” says Dr. Wynne.
In Harvard’s graduate applied physics program, Dr. Wynne would be introduced to the work of IBM legends such as Peter Sorokin and John Armstrong, which ultimately led him to the company’s Watson Research Center in Yorktown Heights, New York, where he made and patented his most famous discovery to date, and where he still works today. In this latest Innovator Insights interview, Dr. Wynne talks more about how he and his colleagues conceived of this game-changing technology (including the role of the turkey dinner), how patents helped, and why the research community—and the public—depend on the patent system in order to bring great discoveries like his to the world.
How did you come to work with the technology that ultimately led to IBM’s patent on excimer laser surgery?
In no way did we imagine this would be used on eyes.
I was hired by IBM in 1969 and went to the company’s lab in Zurich, Switzerland for a year and a half before coming to Watson Research Center in January of 1971. The second and third lasers of all time were produced in the lab where I currently work, in October and November of 1960 by Peter Sorokin and his colleague Mirek Stevenson. My job definition was, for lack of a better description, “to do something great.”
In 1966, Sorokin had invented the dye laser. Working with him, I got involved in using dye lasers and doing optical spectroscopy—an old field that had done great things, but was stale by then, until the dye laser totally revolutionized it. I was promoted to become manager of the laser physics and chemistry group, and one of the people who came into my group was Dr. Rangaswamy Srinivasan (I call him Sri for short). Sri joined IBM research at the Watson Research Center when it was brand new, back in 1960, and he studied how chemical reactions were created by light, which is known as photochemistry. The primary interest at IBM in photochemistry was that the whole semiconductor industry uses a form of it, photolithography, to create the patterns of the tiny electronic components on silicon chips.
Just around [when Sri joined in 1976], the “excimer laser” had become commercially available. “Excimer” stands for “excited dimer.” One of the atoms in an excimer laser had to be a rare gas atom—such as argon, krypton, or xenon—which are known to be nonreactive. In the ground state, these atoms will not form molecules; they are considered “rare gases” because they don’t react with anything else. But if you mix them with a halogen like fluorine or chlorine and create an electrical discharge in the gas mixture, they will form a molecule, or dimer, in the excited state (excimer). If you combined argon with fluorine to create excited argon fluoride, it turned out to be the working substance of a very powerful laser that emitted short pulses of ultraviolet (UV) light. We didn’t have a laser like that in our group, so I got the ok from management to buy one and I encouraged the members of my group to think of ways they might use it. I didn’t know how we would use it—I just knew it was a tool that provided capabilities we didn’t have.
Sri and his technical assistant, Veronica Mayne-Banton, got some time on the laser and irradiated one of the polymers Sri had been studying. He discovered something that other people might have been doing but didn’t recognize—that each short pulse of light from that laser would remove a miniscule amount of material from the polymer. It would photo-etch the polymer, pulse by pulse. If you had the laser beam with a cylindrical cross section, you could create a cylindrical hole in the polymer without any evidence of damage to the surrounding sides of the polymer or the bottom of the hole. To quote Louie Pasteur, “Chance favors the prepared mind.” Sri had a prepared mind to understand how light interacted with plastics or polymers, and he recognized what was going on, which was that you could create very clean patterns in plastics with just this laser, without any additional chemical processing steps.
Once he understood that, he and I started talking about other applications of the laser. My concept was that, if this laser could make these clean holes in plastics, maybe it could make clean holes in human and animal tissue—I was thinking specifically of skin. I thought it might be a terrific scalpel that would make cuts and remove tissue without producing collateral damage to the underlying and adjacent viable tissue.
To test this, first we started irradiating our own fingernails and making patterns in them. Then we irradiated our own hair and made clean patterns in hair. But we were afraid to shine the laser on our own skin. The breakthrough occurred when, the day after Thanksgiving in 1981, Sri brought some turkey leftovers into the lab. He had a turkey bone with some cartilage on it and he used the laser to make a very clean incision in the cartilage. He and our colleague Sam Blum, who had begun working in our group in the summer of 1981, over the next week or two did some much more careful and quantitative analysis of these findings. Sometime early in December, Sri showed the turkey cartilage sample to me and I took it into the lab where I was working with a different laser. The argon fluoride laser Sri had used had a wavelength in the far ultraviolet, at 193 nanometers. Visible light ranges from the blue at 400 nanometers to the red at 700 nanometers. That means our eyes are able to detect that light. But UV light has a shorter wavelength and our eyes can’t see it, but we can feel the effects. It gives us suntan, sunburn, and can induce skin cancer.
I took the turkey sample and I irradiated it with a high energy, short pulse laser that emitted light in the green (a conventional laser). Instead of making a clean incision, all I could do was burn and char it. It was the difference between this ultra clean incision that the argon fluoride excimer laser produced and the burned charred area produced by the short-pulse green laser that was the “aha!” moment for me. That’s when I thought we actually could have a new form of laser surgery.
Did you decide then to patent it?
Sri, Sam, and I brainstormed and wrote an invention disclosure that we finished right at the end of 1981. Sri and I signed it on December 31, Sam signed it on January 4, 1982, and then we submitted it to IBM’s intellectual property law department. From then on, we were told not to disclose this information to the outside world until the patent was filed, which happened in December of 1982.
In the meantime, we were continuing to do experiments and decided that if we were making such clean holes in cartilage and nails and hair, we should try it on our own skin. So we got brave. As a tennis player [I didn’t want to hurt my right hand, so] I remember putting my right hand in my pocket, closing my eyes, and putting the pinky on my left hand in front of the argon fluoride laser beam. I felt no heat and no pain—it was the same feeling as if I had blown a puff of air onto my finger from my mouth. So it looked like we had a pretty good idea.
What did the patent that IBM filed claim exactly?
Today, about 33 million people worldwide have had laser refractive surgery with an excimer laser and about 59 million procedures have been done.
The patent that ultimately issued in 1988 claimed a new form of surgery on all human and animal tissue. I thought it would be great on skin and I pictured brain tissue too. Also, since we’d done our first experiment on turkey cartilage, we thought of orthopedics and dentistry. But in no way did we imagine this would be used on eyes. The claim covered all human and animal tissue, but in our write-up where we provided examples of how it could be used, we never discussed using it on eyes. The reason for that was that the light would not get through the cornea to the retina, and all the laser surgery on eyes that we knew about was being done on the retina. We in no way conceived that it could be used to reshape the cornea.
So how did it become the foundational patent with respect to surgery to modify the curvature of the cornea?
We got lucky. Our patent was filed in December of 1982, so we could now talk about our research, and Sri gave an invited talk at the Conference on Lasers and Electro-Optics (CLEO) in May of 1983 in Baltimore. The paper we had written and tried to get published in Science Magazine had been rejected by one of the referees, on the basis that the laser might cause cancer. It seemed like a silly objection at that point, because we were just reporting our research on dead tissue, but we decided to publish it instead in the trade journal, Laser Focus, which was a widely distributed trade journal in the laser community. As it worked out, the paper came out at the same time as the CLEO conference.
Attending the conference were two ophthalmologists, Stephen Trokel, who is affiliated with Columbia University, and Francis L’Esperance, Jr., who was also with Columbia. They were colleagues but competitors. They both learned about our work at the CLEO conference, if not earlier, and Trokel got in touch with us and came up to the Watson Lab on July 20, 1983 with enucleated calf eyes. Using the excimer laser, he worked with Sri and his technical assistant, Bodil Braren, and made clean incisions in the cornea of the calf eyes.
L’Esperance, meanwhile, actually conceived and wrote the first patent application on reshaping the front of the eye by the procedure now known as photorefractive keratectomy (PRK). His patent on using the excimer laser to reshape the eye was filed before Trokel’s or anyone else’s. The work that Trokel did with Sri was published in the American Journal of Ophthalmology in December of 1983, and things moved forward from there relatively quickly. By 1987 or 1988, sighted humans were being treated with the excimer laser.
Today, about 33 million people worldwide have had laser refractive surgery with an excimer laser and about 59 million procedures have been done.
What did Trokel’s and L’Esperance’s patents claim exactly compared to yours?
We described the process of using short-pulse UV light on human and animal tissue. The excimer laser was the best source, but you didn’t have to use a laser. Their patents dealt with using that process to reshape the cornea and had diagrams that showed light coming from a particular source and being aimed at an eyeball. Ours had a light coming from any source and irradiating tissue in general.
How was IBM’s patent used after that?
Our patent became the foundational patent for the whole laser refractive surgery arena. IBM got licensing fees and ultimately sold the patent to one of the laser eye surgery companies, LaserSight, Inc. The patent was issued in 1988, and it was sold in 1997. LaserSight eventually sold it to Alcon, and the patent expired in 2005. IBM got about $15 million for the sale of the patent, plus the licensing fees we got before it was sold. The recognition and prestige of our work also contributed to our image as one of the preeminent research organizations in the world.
How important was getting the patent to this whole process?
What we did is open the door to the ophthalmologists for a method of changing the curvature of the cornea. The ophthalmology community worked without us to develop their own methodology and form companies and get their own patents. Our role was to make the initial discovery that laid the foundation for this whole procedure. The patent gained important recognition for me and Sri and Sam Blum, but it also laid the groundwork for Trokel’s and L’Esperance’s work and for the work I’m doing now, which could be even more important—we are currently collaborating with Stony Brook University to perform testing of excimer laser surgery on severely burned skin. All indications so far are that we will be able to remove necrotic tissue caused by burns with faster healing, less pain, and less scar tissue formation.
Do you think patenting is important for the research community?
If the cost of developing a practical application of your discovery is significant, you have to raise funds for that, or be protected so that other people can’t cannibalize what you’re doing. The patent system rewards the inventor by giving him or her protection so that he or she can work with whatever is needed to turn it into a practical implementation. When you hear of people buying patents and becoming patent trolls, that maybe perverts the system and gives it a bad reputation, but if you believe in capitalism as promoting innovation, then getting protection for your IP is a very important part of it. Now, there are people who are against capitalism, and maybe you’ll never convince them. You hear about people who buy patents who haven’t actually invented anything and somehow collect money and maybe that isn’t justified, but there are a lot of laws that get abused. You try to have a law in place that will be advantageous to society, and the patent laws I believe are most definitely advantageous to society.
I have a heart stent, for example, and thank goodness that Julio Palmaz got a patent on that and that Johnson & Johnson developed it, and I’m still alive. I also take something called Klonopin® that was developed from Leo Sternbach’s invention of benzodiazepines. These are all inventions protected by patents that allowed them to become practical, commercially available drugs.
There are a lot of laws that get abused. You try to have a law in place that will be advantageous to society, and the patent laws I believe are most definitely advantageous to society.
What advice do you have for future great inventors?
First, you have to find something you love. Then, use other people’s judgment to find out whether you’re good at it. If you love it and you’re good at it, go into that field. “Chance favors the prepared mind.” You have to get good training and then keep your eyes open.
As for the idea of inventing, in any field of science or engineering there’s a chance of making discoveries all the time. If you’re thinking about a practical application, then by all means write it up as a patent application and file it. It’s always very thrilling when you find a practical application that you think is meaningful. We were thinking of a new form of skin surgery, but it turned out to be eye surgery. I’m still working on skin surgery today—this is my passion, to see a revolutionary paradigm shift in the way burns are treated.
It would be good for people in colleges to study some examples of important inventions. The National Inventors Hall of Fame, for instance, was developed as an offshoot of the USPTO to recognize inventors in general and make them into admirable heroes. The goal is to turn important inventors into celebrities, thereby inspiring more young people to pursue STEM (Science, Technology, Engineering, and Mathematics) careers and invent the future.