Autogiro Company of America v. United States, No. 50328.

• Court: Court of Federal Claims
• Writing for the Court: COWEN, , and LARAMORE, DURFEE, DAVIS and COLLINS
• Citation: 384 F.2d 391
• Parties: AUTOGIRO COMPANY OF AMERICA v. The UNITED STATES.
• Docket Number: No. 50328.
• Decision Date: 13 October 1967

384 F.2d 391 (1967)

AUTOGIRO COMPANY OF AMERICA
v.
The UNITED STATES.

No. 50328.

United States Court of Claims.

October 13, 1967.

384 F.2d 392

COPYRIGHT MATERIAL OMITTED

384 F.2d 393

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J. Edward Shinn, Philadelphia, Pa., attorney of record, for plaintiff, Synnestvedt & Lechner, Raymond H. Synnestvedt, Philadelphia, Pa., and C. Willard Hayes, Washington, D. C., of counsel

Acting Asst. Atty. Gen. J. William Doolittle, for defendant, Francis H. Fassett, Alexandria, Va., and Howard B. Rockman, Silver Spring, Md., of counsel.

Before COWEN, Chief Judge, and LARAMORE, DURFEE, DAVIS and COLLINS, Judges.

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OPINION^*

DURFEE, Judge.

The Autogiro Company of America, a Delaware corporation owning all patents involved in this litigation, sues, under 28 U.S.C. § 1498,¹ to recover the "reasonable and entire compensation" for the Government's allegedly unauthorized use of its patented inventions. Only the question of liability is now before the court. The determination of any amount of recovery is reserved for further proceedings before the trial commissioner.

Plaintiff initiated suit in this court on September 21, 1951, with a Petition Pending Motion for Call which claimed the infringement of twenty-six patents. The petition was amended on March 10, 1954; twelve patents were dropped from the suit and six were added. Four years of pre-trial proceedings reduced the number of patents to sixteen. During that period, fourteen witnesses appeared, over one thousand exhibits were presented, and almost fifteen thousand pages of transcript were taken. The trial commissioner issued a 232-page report containing 415 findings of fact. Fifteen of the sixteen patents in suit and eighty-five of their eighty-six claims in suit were found valid and infringed by various Government structures. One patent and its one claim were found not infringed.

Plaintiff has not excepted to any findings of fact. Defendant has excepted to findings concerning the fifteen patents found valid and infringed. We find claims of eleven patents to be valid and infringed.

Patent Infringement

Like many patent infringement suits, this case presents no novel legal questions. Absent are any issues not found in the run-of-the-mine case. This does not mean that the law involved should go unstated. The complexity of the inventions in suit, the length of the trial, and basic disagreement of the parties on legal issues are considerations that dictate a recital of this court's law of patent infringement.

I

The Patent Act of 1952, 35 U.S.C. § 1 et seq., which applies to all patents granted on or before January 1, 1953,² is the controlling law in this case. No previous patent act contained a section on infringement. Congress had always allowed the courts to settle the issue without any legislative guidelines. Rich, Infringement Under Section 271 of the Patent Act of 1952, 21 Geo.Wash.L.Rev. 521 (1953). Section 271(a)³ which covers the type of infringement alleged here was not inserted in the Act to clarify any legal problems, but only as a codification of existing judicial determinations. As one commentator has stated: "We got along without it for 162 years and we could again. Its omission would change nothing." Id. at 537.

The claims of the patent provide the concise formal definition of the invention. They are the numbered paragraphs which "particularly point out and distinctly claim the subject matter

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which the applicant regards as his invention." 35 U.S.C. § 112. It is to these wordings that one must look to determine whether there has been infringement.⁴ Courts can neither broaden nor narrow the claims to give the patentee something different than what he has set forth.⁵ No matter how great the temptations of fairness or policy making, courts do not rework claims. They only interpret them. Although courts are confined by the language of the claims, they are not, however, confined to the language of the claims in interpreting their meaning

Courts occasionally have confined themselves to the language of the claims. When claims have been found clear and unambiguous, courts have not gone beyond them to determine their content. Keystone Bridge Co. v. Phoenix Iron Co., supra, 95 U.S. at 278, 24 L.Ed. 344; Borg-Warner Corp. v. Mall Tool Co., 217 F.2d 850 (7th Cir. 1954); Zonolite Co. and Insulating Concrete Corp. v. United States, 149 F.Supp. 953, 138 Ct.Cl. 114 (1957). Courts have also held that the fact that claims are free from ambiguity is no reason for limiting the material which may be inspected for the purpose of better understanding the meaning of claims. Warner & Swasey Co. v. Universal Marion Corp., supra, 237 F.Supp. at 737.

We find both approaches to be hypothetical. Claims cannot be clear and unambiguous on their face. A comparison must exist. The lucidity of a claim is determined in light of what ideas it is trying to convey. Only by knowing the idea, can one decide how much shadow encumbers the reality.

The very nature of words would make a clear and unambiguous claim a rare occurrence. Writing on statutory interpretation, Justice Frankfurter commented on the inexactitude of words:

They are symbols of meaning. But unlike mathematical symbols, the phrasing of a document, especially a complicated enactment, seldom attains more than approximate precision. If individual words are inexact symbols, with shifting variables, their configuration can hardly achieve invariant meaning or assured definiteness.

Frankfurter, Some Reflections on the Reading of Statutes, 47 Col.L.Rev. 527, 528 (1947). See, also, A Re-Evaluation of the Use of Legislative History in the Federal Courts, 52 Col.L.Rev. 125 (1952).

The inability of words to achieve precision is none the less extant with patent claims than it is with statutes. The problem is likely more acute with claims. Statutes by definition are the reduction

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of ideas to print. Since the ability to verbalize is crucial in statutory enactment, legislators develop a facility with words not equally developed in inventors. An invention exists most importantly as a tangible structure or a series of drawings. A verbal portrayal is usually an afterthought written to satisfy the requirements of patent law. This conversion of machine to words allows for unintended idea gaps which cannot be satisfactorily filled. Often the invention is novel and words do not exist to describe it. The dictionary does not always keep abreast of the inventor. It cannot. Things are not made for the sake of words, but words for things. To overcome this lag, patent law allows the inventor to be his own lexicographer. Chicago Steel Foundry Co. v. Burnside Steel Foundry Co., 132 F.2d 812 (7th Cir. 1943); Stuart Oxygen Co. Ltd. v. Josephian, 162 F.2d 857 (9th Cir. 1947); Universal Oil Products Co. v. Globe Oil & Refining Co., 137 F.2d 3 (7th Cir. 1943), aff'd 322 U.S. 471, 64 S.Ct. 1110, 88 L.Ed. 1399 (1944)

Allowing the patentee verbal license only augments the difficulty of understanding the claims. The sanction of new words or hybrids from old ones not only leaves one unsure what a rose is, but also unsure whether a rose is a rose. Thus we find that a claim cannot be interpreted without going beyond the claim itself. No matter how clear a claim appears to be, lurking in the background are documents that may completely disrupt initial views on its meaning.⁶

The necessity for a sensible and systematic approach to claim interpretation is axiomatic. The Alice-in-Wonderland view that something means whatever one chooses it to mean makes for enjoyable reading, but bad law. Claims are best construed in connection with the other parts of the patent instrument and with the circumstances surrounding the inception of the patent application. Doble Engineering Co. v. Leeds & Northrup Co., 134 F.2d 78 (1st Cir. 1943). In utilizing all the patent documents, one should not sacrifice the value of these references by the "unimaginative adherence to well-worn professional phrases." Frankfurter, supra, at 529. Patent law is replete with major canons of construction of minor value which have seldom provided useful guidance in the unraveling of complex claims. Instead, these canons have only added confusion to the problem of claim interpretation. Doble Engineering Co. v. Leeds & Northrup, supra, at 84.

II

In deriving the meaning of a claim, we inspect all useful documents and reach what Justice Holmes called the "felt meaning"⁷ of the claim. In seeking this goal, we make use of three parts of the patent: the specification, the drawings, and the file wrapper.

Specification. — Section 112 of the 1952 Patent Act requires the specification to describe the manner and process of making and using the patent so that any person skilled in the patent's art may utilize it. In serving its statutory purpose, the specification aids in ascertaining the scope and meaning of the language employed in the claims inasmuch as words must be used in the same way in both the claims and the specification. U.S.Pat.Off. Rule 75(d).⁸ The use of the

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specification as a concordance for the claims is accepted by almost every court, and is a basic concept of patent law.⁹ Most courts have simply stated that the specification is to be used to explain the claims; others have stated the proposition in different terms, but with the same effect. The following expressions are indicative of this latter approach: (1) "* * * A patentee's broadest claim can be no broader than his actual invention." Kemart Corp. v. Printing Arts Research Laboratories, Inc., 201 F. 2d 624, 629 (9th Cir. 1953), (2) "* * Recourse must be had to the specifications to see how far the means there disclosed correspond with those made by the defendant." Perry v. United States, 76 F.Supp. 503, 505, 112 Ct.Cl. 1, 30 (1948); Grubman Engineering & Mfg. Co. v. Goldberger, 47 F.2d 151, 152 (2d Cir. 1931), (3) "While the specification may be...