Cali v. Eastern Airlines, Inc.

• Decision Date: 28 April 1971
• Docket Number: No. 690,Docket 35374.,690
• Parties: Anthony J. CALI, Plaintiff-Appellant, v. EASTERN AIRLINES, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

442 F.2d 65 (1971)

Anthony J. CALI, Plaintiff-Appellant, v. EASTERN AIRLINES, INC., Defendant-Appellee.

No. 690, Docket 35374.

United States Court of Appeals, Second Circuit.

Argued March 30, 1971.

Decided April 28, 1971.

Paul H. Blaustein, New York City (Sandoe, Hopgood & Calimafde, New York City), for plaintiff-appellant.

John Vaughan Groner, New York City, (Donald E. Degling, Fish & Neave, New York City, on the brief), for defendant-appellee.

Before LUMBARD, Chief Judge, and FRIENDLY and KAUFMAN, Circuit Judges.

IRVING R. KAUFMAN, Circuit Judge:

Cali, plaintiff and appellant in this patent infringement action, is a mechanic employed by one of the pioneers in the airlines industry, Pan American World Airways (Pan Am). The kernel of the patented invention which is the subject of this suit was contained in an idea which Cali submitted to Pan Am on a standard form soliciting employees' suggestions in December 1962. Although of course Eastern Airlines, Inc., the appellee and alleged infringer, seeks to minimize its value, Cali's proposal apparently resulted in the correction of a persistent defect in the design of the JT-4 jet engine, then used in Pan Am's Boeing 707 and Douglas DC-8 aircraft before the introduction of the fan jet. Cali's "suggestion-box" solution had eluded the industry's professional engineers.

The sole question raised on this appeal is whether the trial court properly concluded on the basis of the pleadings, affidavits, and depositions before it, that no material fact remained to be tried, thus justifying the grant of Eastern's motion for summary judgment. Judge Dooling, whose opinion is reported at 318 F.Supp. 474, decided that Cali's "invention was * * * in public use" and not used primarily for experimental purposes "more than one year prior to the date" Cali filed his application for a patent and hence the patent was invalid, 35 U.S.C. § 102(b). Accordingly, the action was dismissed. While Eastern may yet ultimately prevail on the question of prior use or on other defenses raised below which are not before us on this appeal, we disagree with the district court that the relevant factual issues have been resolved with such clarity at this stage in the litigation as to justify summary judgment.

I.

Cali applied for his patent on September 1, 1964. The key date for purposes of the "public use" bar of Section 102(b) is thus September 1, 1963. As will appear in more detail, the central question before us involves the nature and purposes of the uses to which Pan Am put Cali's invention prior to that date. Before we evaluate those uses, the contours of Cali's concept must first be sketched.

Cali's patent relates to the design of the front or low pressure compression section of the "axial-flow" compressor, the type of compressor used on the JT-4, manufactured by Pratt & Whitney Aircraft Division of United Aircraft Corporation (Pratt & Whitney). This front end section includes several cylindrical stages, consisting of alternating fan-like rotor sections sandwiched between stationary "stator" sections. Successive rotors blow air back against the blades (or vanes) of the stators (or shrouds), which in turn guide the air inward through the tapering compressor chamber to an outlet section called the fairing. The last, or seventh, stator on the JT-4 was designed by Pratt & Whitney so that it connected loosely to the fairing by means of lugs and slats. The loose interconnection permitted the "floating" fairing to vibrate against the seventh stator assembly, causing abrasive wear of the stator lugs and fairing.

As a mechanic employed by Pan Am since 1957, Cali became familiar with the usual practice of periodically repairing worn stators and fairings. This was done by first rebuilding the worn surfaces by welding them and then machining the rebuilt surfaces to their proper dimensions. Cali's suggestion, submitted to his supervisor in December 1962, proposed as an alternative to this practice "to permanently weld the fairing to the 7th stage vane and shroud" and thus by rigidly interconnecting them to eliminate the abrasive wear and hence the need for periodic repairs. Although this solution was "simplicity itself once it was conceived and expressed," as Judge Dooling characterized it, "introducing rigidity may have been powerfully counter-indicated by engine building lore," 318 F.Supp. at 475, primarily because of the danger of damage from stresses that might accumulate in the two vibrating assemblies.

While precise temporal relationships are unclear in many respects from this record, at approximately the time that Cali's suggestion was being evaluated, Pan Am engineers devised a variant application of the basic rigid-connection idea suggested by Cali's proposed weld technique. By this alternative method, the vibrating parts would be connected by means of long bolts or tie-rods. The tie-rod technique is conceded by both parties to be within the teaching of Cali's patent, whose critical language describes the two vibrating parts as being "rigidly connected" or secured. The primary advantage of the tie-rod variant appears to have been to permit easier assembly and servicing of the engine.

Both parties agree that Cali's suggestion initiated a period of indefinite length during which Pan Am, in the words of Eastern's brief, evaluated the rigid-connection concept at least with the object "of finding out whether the idea was worth using." Specifically, Judge Dooling identified three foci of "problems and hesitations that preceded Pan Am's unrestricted use of the invention." Thus, Pan Am was concerned with the relative merits of the weld and tie-rod methods. Second, as indicated above, the weld method caused difficulty in assembling the compressor (the solution finally hit upon for this problem, the details of which are irrelevant here, is included in Cali's patent). Third, the court referred to certain "consequential effects," such as cracking of the welded assembly which may have caused Pan Am for a time to doubt the efficacy of Cali's approach. 318 F.Supp. at 475-476.

Certain essential details of this period prior to Pan Am's unreserved acceptance of Cali's concept, are not in dispute. Thus, by a telegram dated January 4, 1963, Pratt & Whittney authorized use of the tie rod on a "trial basis." Similarly, on February 8, 1963, Pratt & Whitney wired Pan Am that it had "no objection" to use of the weld "on token number of engines based on your assertion that no assembly difficulty will be encountered." Pursuant to this authorization,¹ Pan Am subsequently installed and used engines incorporating the tie rod technique on one engine and incorporating the weld approach on at least three other engines. In each instance, the engines were installed and used on commercial aircraft in the normal course of Pan Am's business.

II.

The district court viewed each of these commercial uses as a "public use" within the meaning of Section 102(b), and this conclusion can hardly be challenged. That an invention or process employed in the regular conduct of a business is a "public use" for this purpose is a proposition settled long ago and never disturbed. Smith & Griggs Manuf. Co., 123 U.S. 249, 8 S.Ct. 122, 31 L.Ed. 141 (1887). See Electric Battery Co. v. Shimadzu, 307 U.S. 5, 20, 59 S.Ct. 675, 684, 83 L.Ed. 1071 (1939) (defining "public use" to include "the ordinary use of a machine or the practise of a process * * * in the usual course * * * for commercial purposes"); Egbert v. Lippmann, 104 U.S. 333, 26 L.Ed. 755 (1881). This settled concept of "public use" is "extraordinarily broad," Watson v. Allen, 103 U.S.App.D.C. 5, 254 F.2d 342, 345 (1958) (Burger, Circuit Judge). It is a matter of legal indifference that the "public" use may be necessarily concealed from public awareness by the structure of the design or the manner of its use, Hall v. Macneale, 107 U.S. 90, 2 S.Ct. 73, 27 L.Ed. 367 (1882); Egbert v. Lippmann, supra; Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2d Cir. 1946), cert. denied, 328 U.S. 840, 66 S. Ct. 1016, 90 L.Ed. 1615 (1946). Public use by a third party, with or without the knowledge or consent of the patentee, will generally defeat the patent as readily as public use by the inventor himself. Shaw v. Cooper, 32 U.S. (7 Pet.) 292, 8 L.Ed. 689 (1833); A. Schrader's Sons, Inc. v. Wein Sales Corp., 9 F. 2d 306, 308 (2d Cir. 1925). See Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (3d Cir. 1948).

We have previously explained the purposes of this sometimes harsh standard as intended "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 question of the defeat of his patent by a use or sale of it by others more than the statutory period prior to his application" and as designed to avoid the "perplexing questions which must frequently arise when the intent of the user and the bona fides of the use are questions to be determined. * * *" Eastman v. Mayor, etc., City of New York, 134 F. 844, 854 (2d Cir. 1904). See Walker on Patents 700 (2d Ed. 1964). It is thus clear beyond cavil that Pan Am's use of Cali's invention in commercial aircraft prior to September 1, 1963, would defeat Cali's patent, were the uses not included within the "experimental use" exception to the prior use bar which we shall discuss below.

On the other hand, although the parties have not dwelt on the matter, it is necessary to add that the present record would not appear to support a holding that Cali's action in submitting his suggestion to Pan Am constituted a "public use" regardless of the manner of Pan Am's subsequent exploitation of his idea. Cali did not conceal his invention from the public while using it to his commercial advantage more than a year before his application, thus extending the period of his monopoly beyond that protected by the patent laws. To prevent such an abuse...