Farrand Optical Co. v. United States

• Decision Date: 06 November 1963
• Docket Number: No. 403,Docket 27333.,403
• Citation: 325 F.2d 328
• Parties: FARRAND OPTICAL CO., Inc., Plaintiff-Appellant, v. The UNITED STATES of America, Defendant-Appellant.
• Court: U.S. Court of Appeals — Second Circuit

325 F.2d 328 (1963)

FARRAND OPTICAL CO., Inc., Plaintiff-Appellant, v. The UNITED STATES of America, Defendant-Appellant.

No. 403, Docket 27333.

United States Court of Appeals Second Circuit.

Submitted May 21, 1963.

Decided November 6, 1963.

Willis H. Taylor, Jr., and John T. Farley, of Pennie, Edmonds, Morton, Taylor & Adams, New York City, for plaintiff-appellant.

Robert M. Morgenthau, U. S. Atty., and David R. Hyde, David Klingsberg, Robert E. Kushner, Asst. U. S. Attys., Southern Dist. of New York, New York City, for defendant-appellant.

Before CLARK, WATERMAN and MOORE, Circuit Judges.

LEONARD P. MOORE, Circuit Judge.

Plaintiff seeks compensation under the Invention Secrecy Act of 1951, 35 U.S.C. § 183, for the disclosure and use of its invention by the Government. Plaintiff's right to bring this action in a United States District Court, rather than exclusively in the Court of Claims, originally upheld by Judge Ryan in the district court, but denied by a panel of this court, was eventually upheld by an equally divided court sitting in banc. Farrand Optical Co. v. United States, 2 Cir., 317 F.2d 885. The proceeding in banc was restricted to the jurisdictional issue, and thus the original panel must now review the merits.

The basis of the relief sought is claim 32 of the Tripp patent application, now claim 4 of patent No. 2,719,457, which describes a device used by airplane gunners and bombers for scanning the horizon and sighting their targets. The facts of this case are amply presented in Judge Ryan's two comprehensive opinions in this case. Farrand Optical Co. v. United States, D.C.S.D.N.Y., 175 F. Supp. 230; D.C., 197 F.Supp. 756. They need only be reviewed as they bear upon the questions now before us, namely, liability and damages.

Liability

The critical contract is a research and development contract, dated March 10, 1945, between Farrand and the Government (Air Force), in substance, calling for the fabrication of one experimental model of a hemisphere gunsight for the SB-45 airplane. Previous contracts had existed between Farrand and the Navy and Farrand and the Air Force relating to the manufacture of a Mark 33 gunsight. The Government argues that it was vested with title to the Tripp invention under these earlier contracts. The Government's position is not supported by the contracts and the facts and, therefore, is rejected.

The March 10, 1945 contract gave the Government a non-exclusive, irrevocable and royalty-free license to make or have made articles embodying discoveries or inventions made or first reduced to practice "in the performance of this contract." The factual issue is clearly drawn. Farrand contends that the Tripp invention was reduced to practice prior to March 10, 1945 and, hence, was not covered by the contract. The Government argues that reduction to practice did not come about until long after March 10, 1945 and, hence, its license was within the specific terms of the contract. The initial questions are: (1) what was being reduced to practice, and (2) of what did the reduction, if any, consist.

There is no dispute that the basis of the relief sought is claim 4 of patent No. 2,719,457 (the Tripp patent). This claim is based primarily upon the use of a cylindrical lens in combination with prisms to enable the viewer to scan a hemisphere. As stated by the trial judge, "Tripp, finally, with the spark of inventive genius, suggested the use of a cylindrical lens in the objective system of a telescope which would have the effect of splitting the entrance pupil and causing it to lie in two focii, one in each of the prisms. This permitted the use of small prisms without requiring a reduction in size of the entrance pupil and the consequent reduction in angle of view. This is the invention in suit." 175 F.Supp. at 236. This, then, is the invention which had to be reduced to practice.

The Brown Box Mock-Up

Farrand's claim to reduction to practice rests upon the construction prior to March 10, 1945, of a device which embodied the optical principles set forth in claim 4. It was housed in a brown box. By placing the box on a window sill with one end protruding beyond the building line, the observer was able to view an entire hemisphere from his position within the building. To this extent this mock-up, referred to by Farrand as "crude," demonstrated the optical principles of the Tripp invention. If anything were reduced to practice at this stage, it could only have been the basic prismatic device because obviously the Air Force did not desire to order the manufacture of a series of brown boxes so that his fighter pilots could sit at window sills and scan hemispheres. The trial court recognized this limitation by finding that "the invention had no practical use other than on airplanes and for military purposes as a part in a gunsight or bombsight." 175 F.Supp. at 243. In the trial court's second opinion, the same conclusion was reached, the court saying, "It is not in dispute that the invention had no commercial or practical use other than as part of a gunsight or bombsight." 197 F.Supp. at 758. Actually, the mockup was offered "only as a hemisphere sight, with special qualities as to a large field of vision * * * suitable for incorporation in a complete assembly which would comprise an entire fire control system." It was never intended by Farrand or the Air Force that "either the mock-up, or the invention represented, was in itself complete and ready for installation in the nose or side of an airplane as a fire or bombing control system." 175 F.Supp. at 243. "It was recognized by both plaintiff and defendant that the problem of incorporating the sight in a fire control system in a plane was not solved by the mock-up but they also found it probable that, by further development, it could be so incorporated." 175 F.Supp. at 244.

Upon such an appraisal and upon such hopes was the development contract awarded to Farrand in an effort to make practical use of Tripp's ingenious optical invention in a gunsight and/or bombsight. Although the trial court did say that "the mock-up presented in workable and useable form what the Government has called `the real novelty of the device' that is, the invention stated in `Claim 4,'" 175 F.Supp. at 245, the court in view of its many other findings to the contrary could not have meant that the device in the brown box in its then form could have been placed in a fighter or bomber plane and have been either "workable" or "useable."

The device had never been incorporated into a gunsight or a bombsight, had never been tested in such a sight and had never been subjected to any of the actual conditions in or out of an airplane which it would have to meet in use. The trial court, however, held that the brown box mock-up constituted "reduction to practice" under the law. The court's theory was expressed as follows: "After it was inspected, examined and operated, the invention was found by these men skilled in the art to be a satisfactory answer and a solution to the problem the Air Force could not resolve. Nothing more is required to constitute reduction to practice, and more could not be asked for or expected of an inventor. There was nothing conjectural about being able to look through plaintiff's device and being able to scan a 180° hemisphere. What the Air Force was searching for had reached its point of consummation in plaintiff's device." 175 F.Supp. at 243. The court concluded that the mock-up performed "the functions claimed for it and in the manner claimed." 175 F.Supp. at 244. And so it did. In its brown box the optical arrangement invented by Tripp illustrated the optical principles covered by claim 4. But is this "reduction to practice"?

What constitutes "reduction to practice" has been the subject matter of many decisions. "The general rule is well established that tests under actual working conditions are necessary to establish reduction to practice." Kruger v. Resnick, 197 F.2d 348, 39 C.C.P.A. Patents, 994, and cases there cited. Gaiser v. Linder, 253 F.2d 433, 436 (C.C.P.A.1958).

A review of the relevant cases decided over the last fifteen years by appellate courts indicates the importance of the "reduction to practice" element. Gaiser v. Linder, supra, involved an airplane windshield provided with a transparent electroconductive film through which electric current would be passed to heat the windshield and prevent icing. The court rejected the contention that since the only tests necessary were those showing that the film would produce uniform temperatures, laboratory tests were sufficient, saying:

"The purpose for which the articles tested were designed was not to give uniform temperatures in a laboratory, but under service conditions in an airplane. It is entirely possible that a coating which would operate satisfactorily under laboratory conditions might fail to do so under the varying conditions of sun, wind, precipation, vibration, and pressure encountered in actual use." At 435 of 253 F.2d.

Radio Corp. of America v. International Stand. Elec. Corp., 232 F.2d 726 (3d Cir. 1956) involved a radar system. The court found that there had been no reduction to practice, saying:

"The claimed invention was talked about as something to use on ships and large airplanes. Despite the obvious differences in the conditions on top of an office building and that on a moving ship at sea or in an airplane there was no experimentation done in either place." At 731 of 232 F.2d.

Chandler v. Mock, 202 F.2d 755 (C.C.P.A. 1953) involved an aircraft carburetor embodying a new automatic unit for the control of air and fuel mixtures. In holding the device not reduced to practice, the court said:

"The board in reaching its conclusion properly proceeded in accordance with an established principle of patent law that tests of a complex mechanical device consisting of an aircraft carburetor must establish that the carburetor would satisfactorily operate

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