Garrett Corporation v. United States

• Decision Date: 20 February 1970
• Docket Number: No. 312-65.,312-65.
• Citation: 422 F.2d 874,164 USPQ 521
• Parties: The GARRETT CORPORATION v. The UNITED STATES.
• Court: U.S. Claims Court

164 USPQ 521, 422 F.2d 874 (1970)

The GARRETT CORPORATION v. The UNITED STATES.

No. 312-65.

United States Court of Claims.

February 20, 1970.

Wayne L. Benedict, Washington, D. C., atty. of record, for plaintiff. James P. Burns, Robert S. Swecker, and Burns, Doane, Benedict, Swecker & Mathis, Washington, D. C., of counsel.

Vito J. DiPietro, Washington, D. C., with whom was Asst. Atty. Gen., William D. Ruckelshaus, for defendant.

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

OPINION

PER CURIAM.

This case was referred to Trial Commissioner James F. Davis with directions to make findings of fact and recommendations for conclusions of law under the order of reference and Rule 57(a) since September 1, 1969, Rule 134(h). The commissioner has done so in an opinion and report filed on June 23, 1969. Exceptions to the commissioner's findings and recommended conclusion of law were filed by defendant. Plaintiff filed no exceptions and urged that the recommended conclusion of law be adopted by the court. The case has been submitted to the court on the briefs of the parties and oral argument of counsel. Since the court agrees with the commissioner's opinion, findings and recommended conclusion of law, as hereinafter set forth, it hereby adopts the same as the basis for its judgment in this case.^* Therefore, it is concluded and held that claims 2, 5, and 6 of the Walker patent (U.S. Patent No. 2,914,779) are invalid and claim 3 thereof is valid and infringed and further that claims 1-3 of the Taylor patent (U.S. Patent No. 2,804,633) are valid and infringed. Plaintiff is entitled to recover reasonable and entire compensation for unauthorized use by defendant of these valid and infringed patent claims and judgment is entered for plaintiff accordingly with the amount of recovery to be determined pursuant to Rule 131(c) (2). All claims asserted in the petition, other than those for which plaintiff is held to be entitled to recover, are dismissed.

OPINION OF COMMISSIONER

DAVIS, Commissioner.

This is a patent suit under 28 U.S.C. § 1498 to recover "reasonable and entire compensation" for alleged unauthorized use by the government of inventions disclosed and claimed in two patents owned by plaintiff. Only the issue of liability is before the court; accounting, if any, is deferred to later proceedings. The patents in suit relate to inflatable life rafts. No. 2,914,779 (the "Walker" patent) discloses a boarding ramp to assist survivors in the water to board the raft. No. 2,804,633 (the "Taylor" patent) discloses improved structure for mounting and supporting a canopy over the raft. Plaintiff contends that claims 2, 3, 5, and 6 of the Walker patent and claims 1-3 of the Taylor patent are infringed by a government-procured raft designated type F-2B, made by the Patten Company, Lake Worth, Florida, in accordance with two military specifications.

The issues before the court are patent validity under 35 U.S.C. §§ 102, 103, and 116, and patent infringement. Defendant contends that claims 2 and 3 of Walker are invalid under §§ 103 and 116; that claims 5 and 6 are invalid under §§ 102(b) and 103; and that none of claims 2, 3, 5, and 6 are infringed, even if valid. Defendant further contends that claims 1-3 of Taylor are invalid under §§ 102(a) or (b) and 103, and that claim 3 is not infringed. Defendant concedes that Taylor claims 1 and 2 are infringed, if valid.

WALKER PATENT

Walker describes a boarding ramp for use in conjunction with an inflatable life raft. The life raft, admittedly old, consists of two superposed inflatable tubes with a fabric floor in between. The tubes encircle the floor to form an occupant-receiving space. The boarding ramp comprises a pair of inflatable tubes, called in the patent specification "structural beams," which are attached in cantilever fashion to the raft. The beams extend outward horizontally from the raft parallel to each other and are connected together across their tops by impervious fabric to form a deck-like surface to which is attached handles for grasping by a survivor in the water. The ramp provides a rigid, buoyant structure at water level by which survivors are supported and assisted into the raft.

In one embodiment of the ramp, the deck fabric extends around the outboard end of the beams and is turned up and secured to the underside of the deck to form a water ballast pocket at the end of the ramp. The pocket has ports underneath the deck near the deck surface and above the normal water line of the ramp. Water thus enters the ballast pocket only when the end of the ramp is submerged sufficiently to lower the ports below water level. The patent specification says

When the ramp is boarded from the water the free end of the beams * * * will yield slightly so that the upper surface of the deck member will be substantially at water level. When the ramp is in this position the ports * * * will be below the normal or average water line and water will flow through the ports into the water ballast pocket * * *. * * * The ports * * * are intentionally located above the normal water line * * * when the boarding ramp is unoccupied so that a larger quantity of water will be maintained in the pocket * * *. Thus, this boarding ramp, while functioning to facilitate entry onto the life raft * * *, additionally functions to provide stability to the entire raft.

Claims 2, 3, 5, and 6 are set out in finding 6. In essence, claims 5 and 6 define the ramp (i. e., the structural beams covered by fabric deck) in combination with an inflatable life raft. Claim 2, similar to claims 5 and 6, further recites the water ballast pocket which the claim says causes the ramp "to function as an outrigger and provide stability to the life raft." Claim 3, similar to claim 2, defines the water ballast pocket as having "access means located above the normal water line when the ramp is unoccupied for admitting water to said pocket."

Validity of claims 5 and 6

Defendant says claims 5 and 6 are invalid as anticipated under 35 U.S.C. § 102(b) by a document (hereafter the "British report") entitled "Boarding of Large Inflatable Dinghies from the Water," prepared in 1949 by V. N. Drake for the Marine Aircraft Experimental Establishment, a British Government agency. The British report, not considered by the Patent Office during prosecution of Walker's patent application, is a summary including drawings and photographs of work done in Great Britain up to 1949 to develop boarding devices for large life rafts. Among other things, the report discloses a boarding ramp, for use with inflatable life rafts, comprising a pair of inflatable beams secured to a life raft and extending outwardly therefrom in horizontal plane at water level. A fabric apron is stretched across the beams and is fastened to their tops to form a deck. Between the beams at their outer ends is a so-called thwart, which is simply a small diameter inflatable tube connecting together the beam ends.

The British report describes tests of the boarding device, noting that it was "an extremely stiff appendage"; that "the rigidity of its outer end was quite surprising"; that "boarding proved to be fully as easy as previously"; but cautioning that "attachment to the raft needs to be very strong" to avoid damage by heavy weather. The report further noted that at tests, the device "started to tear apart from the main beam," probably due to "incomplete curing of the rubber solution" used to cement the device to the raft.

Plaintiff challenges the British report as anticipatory prior art on two grounds: (1) It is not a "publication" within the meaning of 35 U.S.C. § 102(b) because "it was not made available to the public more than one year before the filing date of the Walker patent application filed December 9, 1955, and (2) even if statutory prior art, the report fails to anticipate because it teaches nothing more than an "abandoned unsuccessful experiment" which was an "admitted failure." Neither contention has merit.

To be a "publication" under the statute, a document must, among other things, be accessible to the public.¹ Badowski v. United States, 164 F.Supp. 252, 143 Ct.Cl. 23 (1958); I ROBINSON, PATENTS, §§ 325-27; I WALKER, PATENTS, § 60, at 272-77 (Deller's 2d ed. 1964). The public, for purposes of the statute, constitutes that class of persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents. Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928); Camp Bros. & Co. v. Portable Wagon Dump & Elevator Co., 251 F. 603 (7th Cir. 1917), cert. denied, 248 U.S. 572, 39 S.Ct. 11, 63 L.Ed. 427 (1918); I.C.E. Corp. v. Armco Steel Corp., 250 F.Supp. 738 (S.D.N.Y.1966). Factors bearing on whether a document was published include the number of copies made, availability, accessibility, dissemination, and even intent. In re Tenney, 254 F.2d 619, 45 CCPA 894 (1958).

About 80 copies of the British report were distributed in Great Britain prior to 1955 to various British Government agencies, American Government personnel in Great Britain, and 6 commercial companies. The report was unclassified and unrestricted in its use. While distribution to government agencies and personnel alone may not constitute publication (Ex parte Suozzi, 125 USPQ 445 (P.O.Bd.App.1959)), distribution to commercial companies without restriction on use clearly does. Also pertinent is the fact that after 1950, the report was made available for dissemination in the United States through the Defense Department to government contractors who were advised of its availability and could obtain copies upon request at no cost. Coupled with distribution in Great Britain, evidence of availability in the United States to an interested segment of the public shows intent to make the contents of the report freely accessible. In re Tenney, supra; Hamilton Laboratories, Inc. v. Massengill, 111 F.2d 584 (6th Cir. 19...