Farrand Optical Co. v. United States

• Decision Date: 21 July 1959
• Citation: Farrand Optical Co. v. United States, 175 F.Supp. 230 (S.D. N.Y. 1959)
• Parties: FARRAND OPTICAL CO., Inc., Plaintiff, v. UNITED STATES of America, Defendant.
• Court: U.S. District Court — Southern District of New York

175 F. Supp. 230

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

United States District Court S. D. New York.

July 21, 1959

COPYRIGHT MATERIAL OMITTED

Pennie, Edmonds, Morton, Barrows & Taylor, New York City, for plaintiff(Willis H. Taylor, Jr., John T. Farley, New York City, of counsel).

S. Hazard Gillespie, Jr., U. S. Atty., for Southern Dist. of New York, New York City, for defendant(John S. Clark, Asst. U. S. Atty., New York City, and Bernard Wohlfert, Atty., Dept. of Justice, Washington, D. C., of counsel).

RYAN, Chief Judge.

This suit was filed on May 5, 1955, under the provisions of The Invention Secrecy Act of 1951, Title 35 U.S.C. § 183;July 19, 1952, C. 950, Sec. 1, 66 Stat. 806; and of The Mutual Security Act of 1954, Title 22 U.S.C.A. § 1758;August 26, 1954, C. 937, Ch. IV, Sec. 506, 68 Stat. 852.

Plaintiff seeks compensation for damage and use of an invention by the Government, under Title 35 U.S.C. § 183, and for unauthorized use or disclosure of the same invention by the Government, under Title 22 U.S.C.A. § 1758.

Plaintiff, Farrand Optical Co., Inc., is a New York corporation organized in 1940.Its principal place of business and its plant has been located in the County of the Bronx, New York, since 1941.Farrand Optical Co., Inc., has been engaged in the design, development and manufacture of optical instruments; including fire control equipment for the military services.The president of the corporation is and has been Clair L. Farrand; the chief engineer during the material period was Robert W. Tripp — the inventor named in the patent involved in this suit.

It is admitted in a stipulation filed before trial that plaintiff was and still is the assignee and owner of the invention in suit, described and claimed in the application for United States Letters Patent of Robert W. Tripp filed August 19, 1946, SerialNo. 691,556, for "Hemisphere Sight" by assignment executed August 8, 1946, recorded in the United States Patent OfficeAugust 19, 1946 at Liber K208, Page 38, and of the twenty-two (22) claims thereof allowed December 21, 1948, now United States PatentNo. 2,719,457, entitled "Scanning Telescope Having Astigmatized Pupil" granted October 4, 1955.

It has also been stipulated that on February 23, 1949, a Secrecy Order was entered by the Commissioner of Patents in this Tripp application for United States Letters Patent as shown at page 105 of the certified file wrapper and contents of United States Letters PatentNo. 2,719,457, under the Act of October 6, 1917, as amended: 35 U.S.C. §§ 42-42f;40 Stat. 394,54 Stat. 710,55 Stat. 657,56 Stat. 370.

We find that this Secrecy Order, entered in the Tripp application, was issued at the direction of the United States Air Force, Commanding General, Office of the Judge Advocate.

It is not in dispute that on December 2, 1954, the Secrecy Order was rescinded under the provisions of Title 35 U.S.C. §§ 181-188(1952) in respect of the subject matter of the application and of the allowed claims.

It is also stipulated that United States Letters PatentNo. 2,719,457 was granted October 4, 1955 on the Tripp application, subsequent to the commencement of this action on May 5, 1955.The patent contains the twenty-two (22) claims allowed.

The plaintiff has also by stipulation agreed that in seeking the relief asked in the complaint under Title 35 Section 183, and under Title 22 Section 1758, it will rely only on the invention defined by claim thirty-two (32) in the Tripp application, now claim four (4) of patent No. 2,719,457.Claim 32 (patent claim 4) reads as follows:

"4.In a telescope having

"(1) an objective,

"(2) an aperture stop, and

"(3) axially separated prismatic scanning elements mounted in front of the objective,

"(4) said scanning elements having their prismatic axes mutually perpendicular and having the prismatic axis of the element closer to the objective disposed perpendicular to the optical axis of the telescope,

"(a) a cylindrical lens interposed between the objective and aperture stop adjacent a plane at which the telescope focuses images of distant objects for astigmatizing the image of the aperture stop produced by the elements of the telescope between the aperture stop and scanning elements,

"(b) said cylindrical lens having its cylindrical axis disposed perpendicular to the axis of the telescope and parallel to the prismatic axis of the element closer to the objective."

The defendant has conceded and admitted for the purposes of this action only the validity and patentability of claim four (4) of the patent No. 2,719,457 — allowed claim thirty-two (32) of the application, within the purview of the Patent Act, July 19, 1952.

The defendant has also admitted use of the subject matter of claim "4" of the patent in suit in "Hemisphere Gunsights and Vertical Periscopic Bombsights" procured by it under certain specified contracts made by it with parties other than plaintiff.

Thus, the questions of validity and of infringement (or better, employment and use, for the defendant contends that the application and employment of the invention was under circumstances not entitling plaintiff to recover for infringement) have been conceded by the defendant, and have been eliminated as factual issues.All of these admissions have been set forth in a pre-trial stipulation.

It should be noted, too, that this is not a patent suit for infringement.Suit was filed and issue joined, prior to the issuance of the patent on October 4, 1955.The claims here asserted are for compensation for use and disclosure.

There was a further pre-trial stipulation by which the issues to be tried were stated and in which it was recognized that these issues fell within one of two groupings — (1) the right of the plaintiff to recover just compensation under Title 35 U.S.C. § 183andTitle 22 U.S.C.A. § 1758(which we have referred to on trial as the issue of liability of the defendant, if any, on the claims here asserted); and (2) in the event of a determination of this issue in favor of the plaintiff, the amount of such compensation.For the orderly presentation of the evidence, the Court, with consent of counsel, has tried first the issue of liability; and it has been understood that, if required, the trial shall be continued, after this determination, as to the remaining issue — the amount of just compensation due to the plaintiff.We set forth our findings and conclusions only as to the liability of the defendant on the claims asserted.

A proper understanding of the plaintiff's claims requires that we briefly consider the relations and dealings of the plaintiff with the various military services prior to the filing of the application for the patent in suit.

In early 1941the plaintiff Farrand received from the Department of the Navy facilities which included a four-story industrial building, together with machinery, tools and sundry equipment suitable for the manufacture of optical instruments.This plant and equipment was to be used primarily for Government contracts but Farrand was authorized to use the facilities for private, non-Government business upon the payment of a charge.

Plaintiff on June 22, 1942 entered into a contract with the Navy Department for the manufacture of approximately four hundred Mark 33 periscopes (gunsights) for use as a part of a fire control system for directing and controlling the vertical axis machine gun turrets on an airplane.The Mark 33 Gunsight was essentially two single-end periscopes placed end to end.These sights were double-ended, vertical, periscopic and capable of scanning a hemisphere either above or below the airplane fuselage.They furnished azimuth and elevation information in polar coordinates for use in driving upper and lower gun turrets.The position of the line of sight of the sighting station both in azimuth and in elevation was converted into signal voltages by the azimuth and elevation selsyn generators on the sight.One, the azimuth, rotated with the sight about its vertical axis; the other, the elevation, rotated in accordance with rotation of the elevation prism; both were transmitted to the machine gun and turret being controlled.The gunner could sight through either the upper or lower end of the Mark 33 sight, but only through one end at a time.The gunner operated the sight by two rotatable control grips, one for each hand mounted on a horizontal shaft; the grips rotated the elevation prisms.The changeover from one head to another, lower to upper telescope, or vice versa, required but a half second and to avoid frequent changeovers when tracking a target substantially on the horizon the changeover was provided with an overlap.The upper head covered elevation from the zenith to a few degrees below the horizontal, and the lower head covered elevation angles from the nadir to a few degrees above horizontal.Mounted for unlimited rotation about its vertical axis, the sight could be turned around in azimuth to the right or left in complete 360-degree circles or any part thereof.The gunner's seat was mounted on a circular track around the sight unit; the gunner rotated the sight and his own body by the movement of his feet upon the compartment floor.

But it was found that the fire control equipment which included the Mark 33 sight in combination with the General Electric Amplidyne and turret control system was not practical for the Navy planes.In the latter part of 1943, the Navy served notice that it would terminate the Mark 33 procurement program.In an endeavor to find a new source of business Clair L. Farrand and Robert W. Tripp visited Wright Field, Dayton, Ohio, the wartime center of Air Corps procurement and development.They took with them a Mark 33 sight and attempted to interest the Air Force in the production of that sight by plaintiff.

The Air Force procurement were having difficulties obtaining deliveries from their sources of supply; they...