Atlas v. Eastern Air Lines, Incorporated, 6014.

• Decision Date: 11 December 1962
• Docket Number: No. 6014.,6014.
• Citation: 311 F.2d 156
• Parties: David ATLAS, Plaintiff, Appellant, v. EASTERN AIR LINES, INCORPORATED et al., Defendants, Appellees.
• Court: U.S. Court of Appeals — First Circuit

311 F.2d 156 (1962)

David ATLAS, Plaintiff, Appellant, v. EASTERN AIR LINES, INCORPORATED et al., Defendants, Appellees.

No. 6014.

United States Court of Appeals First Circuit.

December 11, 1962.

Joseph Zallen, Boston, Mass. (Martin W. Cohen, Boston, Mass., on the brief), for appellant.

Robert B. Russell, Westwood, Mass. (Russell, Chittick & Pfund, Boston, Mass., on the brief), for appellees.

Before WOODBURY, Chief Judge, and HARTIGAN and ALDRICH, Circuit Judges.

HARTIGAN, Circuit Judge.

This is an appeal from a judgment of the United States District Court for the District of Massachusetts entered January 8, 1962 granting defendants' motion for summary judgment and dismissing the complaint, and from the denial of plaintiff's motion for rehearing entered April 9, 1962.

Plaintiff-appellant, a resident of Massachusetts, brought an action against defendants-appellees, Delaware corporations, claiming damages for infringement of Atlas plaintiff's patent No. 2,656,531 and reissue patent No. Re 24,084. The original patent and the reissue relate to a "Device to Permit Radar Contour Mapping of Rain Intensity." This device — designed for use in airplanes — involves a method of directing radar transmission towards a storm area and estimating the degree of magnitude of storm intensities by the strength of echo signals returned by the water particles within the storm cloud. A pictorial map of the relative intensities of water particles within the storm area is furnished the pilot of a plane in the form of contours on the PPI scope of a radar set, thus enabling the pilot to direct his flight course through the less dense areas of the storm — avoiding the turbulent or dangerous areas.

Plaintiff apparently developed the device sometime in 1947 while employed as a meteorologist by the Air Material Command at Wilmington, Ohio. He filed his original application for a patent on September 12, 1950. The patent was granted on October 20, 1953 and reissued on November 1, 1955.

In the court below, following extensive pre-trial discovery, defendants moved for summary judgment on the ground that the subject patents were invalid because the patented device had been fully described to the public in printed publications as early as three years in advance of the date that plaintiff applied for his patent. Alternatively, defendants contended that the subject device had been in "public use" more than one year prior to plaintiff's application and consequently that the action was barred under 35 U.S.C. § 102(b) which provides in pertinent part:

"A person shall be entitled to a patent unless * * * (b) the invention was * * * in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States * * *."

The district court, after reviewing the various asserted instances of prior publications, held that none could be deemed so comprehensive or detailed so as to constitute a publication sufficient to render the subsequent grant of the patent invalid. Wisconsin Alumni Research Foundation v. George A. Breon & Co., 85 F.2d 166 (8th Cir. 1936).

However, the district court held that there had in fact been a public use of the patented device more than one year prior to plaintiff's filing his patent application and, on this basis, granted defendants' motion for summary judgment.

The asserted instance of public use involved a flight by American Airlines on August 12, 1949,¹ on which a device comparable to the one subsequently patented by plaintiff was utilized and demonstrated. The record indicates that sometime after plaintiff had developed his device, American Airlines, under a contract with the Navy, had itself devised an instrument designed to permit radar contour mapping of storm areas. As noted by the district court, American Airlines' instrument differed technically from the device of plaintiff in that it utilized but two channels as opposed to the four which were found in plaintiff's instrument. However, this difference was not material since, as plaintiff admitted in his deposition, the two-channel variation "was such an obvious thing to do that it was hardly worth while." However, it is clear that both the two and four channel devices were designed to serve the identical function — that is to provide the pilot of an aircraft with a means of analyzing the internal discriminations within an area of turbulence as distinguished from merely being given a view of the general exterior shape of the storm — the apparent state of the art prior to the subject inventions.

The facts surrounding the asserted and critical instance of public use were described by the district court as follows:

"After plaintiff had developed his device, the airline American made a so-called `simplified version\' of the device which it installed on a test plane along with other radar equipment which it was testing * * *. On August 12, 1949 American Airlines conducted a flight of this test plane for the purpose of demonstrating their latest developments in flight equipment to eight invited representatives of the press. Their version of the Atlas device was installed in the plane; it was shown in operation to the newsmen present. They were given an explanation of its purpose and usefulness and shown photographs of radar pictures of storm contours which would be produced on a radar screen by the use of the device. No actual storm was encountered during the demonstration flight, so that the newsmen did not see the actual pictures produced in the presence of a storm."

Plaintiff argues that the flight of August 12, 1949 should not be regarded as a "public use" — invalidating plaintiff's patent — because the flight was of an "experimental" nature and consequently an exception to the ordinary rule that public use one year before application invalidates a patent. The validity of plaintiff's contention presents the major issue on this appeal.

It is well settled that the policy consideration behind the "public use" rule is to stimulate a seasonable disclosure of new inventions within the framework of the patent laws. In Pennock v. Dialogue, 27 U.S. (2 Pet) 1, 7 L.Ed. 327 (1829), the Supreme Court stated that the public use provisions were aimed at preventing an inventor from holding back the secrets of his invention while concurrently exploiting it, and thereafter exchanging his knowledge for a legal monopoly when confronted with the possibility of competition. This policy was reiterated by the Court in Andrews v. Hovey, 123 U.S. 267, 274, 8 S.Ct. 101, 31 L.Ed. 160 (1887), aff'd on rehearing, 124 U.S. 694, 8 S.Ct. 676, 31 L.Ed. 557 (1888), where it was stated: "Its object was to require the inventor to see to it that he filed his application within the statutory period from the completion of his invention, so as to cut off all questions of the defeat of his patent by a use or sale of it by others more than the statutory period prior to his application * * *."

An exception to the general principle of seasonable disclosure articulated in the "public use" provisions occurs in those situations where the use in question is of an experimental nature. Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5, 59 S.Ct. 675, 83 L.Ed. 1071 (1939). This exception proceeds on the premise that an inventor, once he has conceived his invention, should be accorded sufficient time to perfect that invention and the time which elapses during this interim period should not be computed as part of the "one year" requirements of the "public use" statute. During the experimental period, the inventor may freely use his invention "for the purpose of testing the machine," Smith and Griggs Mfg. Co. v. Sprague, 123 U.S. 249, 256, 8 S.Ct. 122, 125, 31 L.Ed. 141 (1887) or "in order to bring the invention to perfection" Elizabeth v. Pavement Co., 97 U.S. 126, 134, 24 L.Ed. 1000 (1877) without causing the statutory period relating to public use to run.

Neither the fact that the invention in question was used in public over a protracted period of time, Elizabeth v. Pavement Co., supra, nor the fact that the owner may have derived some financial profit during the time that the device was so used, Smith and Griggs Mfg. Co. v. Sprague, supra, will negate the contention that the use was "experimental" where the facts indicate that the subject use was essentially an integral part of a bona fide program of experimentation. In short, to fall within the exception the use must be one "which may be properly characterized as substantially for purposes of experiment," Smith and Griggs Mfg. Co. v. Sprague, supra, 123 U.S. at 256, 8 S.Ct. at 125 regardless of its incidental features. And "as a general principle, any non-secret use of the completed and operative invention or discovery in its natural and intended way is a public use within the meaning of the statute." Bourne v. Jones, 114 F.Supp. 413, 419 (D.C.S.D.Fl. 1952), aff'd, 207 F.2d 173 (5th Cir. 1953), cert. den., 346 U.S. 897, 74 S.Ct. 220, 98 L.Ed. 398.

Where the validity of a patent is put in issue on the basis of a "public use" outside the statutory limit, the party asserting such use must offer evidence that "shall be clear, satisfactory, and beyond a reasonable doubt." The Barbed Wire Patent, 143 U.S. 275, 284, 12 S.Ct. 443, 447, 36 L.Ed. 154 (1892). However, once a prima facie demonstration of the claimed use has been made, the inventor carries the burden of showing that the use was not of a functionally operative device, or was substantially used for experimentation or testing purposes and this must be demonstrated by strong and convincing proof. National Biscuit Co. v. Crown Baking Co., 105 F.2d 422 (1st Cir. 1939).

As noted above, the instant case...