General Elec. Co. v. United States

• Decision Date: 17 June 1981
• Docket Number: No. 188-75.,188-75.
• Citation: 654 F.2d 55
• Parties: GENERAL ELECTRIC COMPANY v. The UNITED STATES and Honeywell, Inc.
• Court: U.S. Claims Court

654 F.2d 55

GENERAL ELECTRIC COMPANY v. The UNITED STATES and Honeywell, Inc.

No. 188-75.

United States Court of Claims.

June 17, 1981.

Ronald R. Snider, Washington, D. C., atty. of record, for plaintiff. Irving M. Freedman, Utica, N. Y., Ralph M. Savage, New Hartford, N. Y., Arthur E. Bahr and Snider, Sterne & Saidman, Washington, D. C., of counsel.

Steven Kreiss, Washington, D. C., with whom was Acting Asst. Atty. Gen. Thomas S. Martin, for defendant. Vito J. DiPietro, Washington, D. C., of counsel.

John S. Munday, Minneapolis, Minn., for Honeywell, Inc., third party defendant. Andrew E. Taylor and Larson, Taylor & Hinds, Arlington, Va., of counsel.

Before COWEN, Senior Judge, and DAVIS, KASHIWA, KUNZIG and BENNETT, Judges, en banc.

OPINION

PER CURIAM:

This suit is brought by plaintiff, General Electric Company (GE), seeking reasonable and entire compensation for the alleged unauthorized use by or for the United States of the invention described in and covered by United States Patent No. 3,203,259 ('259 patent), under 28 U.S.C. § 1498(a) (1976), and for the unauthorized practice of the invention within the United States in connection with the furnishing of assistance to foreign governments under 22 U.S.C. § 2356(a) (1976).

United States Patent No. 3,203,259 (the "Lemmerman patent"), entitled "Viscous Damped Sensing Device," issued on August 31, 1965 in the name of Harold H. P. Lemmerman as the sole inventor, on an application filed December 31, 1956 (Serial No. 631,903). GE is, and has been since the issuance thereof, the assignee and sole owner of the Lemmerman patent.

GE alleged in its petition that the invention covered by the Lemmerman patent has been manufactured or used by or for the Government in connection with gyroscopes furnished by Honeywell, Inc. (Honeywell); Lear-Siegler, Inc. (Lear-Siegler); Kearfott Division of General Precision, Inc. (Kearfott); Nortronics Division of Northrop Corporation (Nortronics); and Giannini Controls Corporation (Giannini). At the trial, the respective gyros were identified as the GG-87 and GG-1111 (Honeywell) and the G1-T1, GR-H3 and GR-H4 (Nortronics) gyros. No evidence was introduced with respect to gyros manufactured by Lear-Siegler, Kearfott, or Giannini.

The Government filed its answer, denying infringement and validity. In addition, it asserted various affirmative defenses of unenforceability, including a claim of a license under the patent. By amendment to its answer the Government added a defense of invalidity on the ground that GE engaged in conduct which was inequitable and constituted a fraud on the Patent Office in procuring the patent. The Government also amplified its pleading with respect to the alleged sale or offering for sale of devices covered by the patent, by GE and others, more than a year prior to the date on which the application for patent was filed by GE.

Pursuant to Rule 41, Honeywell and Lear-Siegler were noticed to appear and assert any claim they had or may have had in the subject matter of the suit. Only Honeywell appeared and participated in the pretrial, trial, and post-trial proceedings. Honeywell filed a separate answer which incorporated the substance of each of the defenses relied upon by the Government.

The case was tried before former Trial Judge Francis C. Browne who issued a comprehensive opinion and findings dealing with every issue of the many pursued before him. He concluded that plaintiff is not entitled to recover and that the petition should be dismissed. Both GE and the Government excepted to some of the trial judge's holdings and the case has been argued before the court en banc.¹ We find that it is necessary and appropriate to reach and consider only one issue — whether the patent is invalid because of a prior sale by Control Engineering Corporation more than one year before the filing date of the '259 patent application — and therefore confine our consideration and discussion to that one dispositive question which Trial Judge Browne decided against plaintiff. On that issue we agree with the trial judge, hold that the patent is invalid on that basis, and that therefore plaintiff cannot recover, and accordingly we dismiss the petition.²

The Lemmerman patent in suit ('259 patent) is described by the Court of Customs and Patent Appeals in White v. Lemmerman, 341 F.2d 110, 110-12, 144 USPQ 409, 409-11 (C.C.P.A.1965) (a patent interference proceeding between two patent claimants). Defendant contends that the invention covered by each claim of the '259 patent was in public use or on sale by Control Engineering Corporation (CEC) prior to December 31, 1955 (more than 1 year prior to the December 31, 1956 filing date of the '259 patent application). Accordingly, defendant contends that all claims in the patent are invalid under § 102(b) of the Patent Act.³ We accept that argument (and therefore go no further).

The evidence establishes that in 1954, CEC began developing a rate gyro designated as the GR-J1. After a prototype was built and tested, its Chief Components Engineer Swainson asked one of CEC's design and development engineers, Koning, to prepare a detailed estimate of the cost of producing a limited production lot of 20 GR-J1 gyroscopes. Koning prepared an estimate and submitted a five-page memorandum, dated May 5, 1955, to Swainson, outlining in detail the estimated cost of each component and the time required to fabricate and install each component in a final assembly. Subsequently, CEC ordered the necessary parts and began production of a limited number of GR-J1 gyroscopes.

The first prototype GR-J1 models were constructed by skilled technicians from a sketch drawn by Koning in August 1954. CEC did not, however, go into production of large quantities of GR-J1 gyros on the basis of this sketch alone, since numerical scale dimensions of each gyro component were not given. A detailed set of shop or production drawings which showed this information was made later that year.

To establish the structural details of the GR-J1 gyro, defendant offered in evidence Koning's original sketch and the set of production drawings made later in 1954. Although plaintiff challenged the credibility of the production drawings, based on the fact that a few were dated after the critical date of December 31, 1955, unrebutted testimony clearly established that the drawings were merely replacements of earlier drawings which had to be updated to reflect minor tolerance changes made during production. These changes did nothing to affect the applicability of the claims in suit to the structural features or operation of the GR-J1 gyros. Moreover, the later dated drawings were not indispensable to establishing the identity of the structural elements of the gyros.

The drawings and the unrebutted testimony of many witnesses, including that of Koning and Swainson (both of whom were intimately familiar with the GR-J1 gyro), clearly established that the GR-J1 had complementary rotor and stator vanes which cooperated with a low viscosity fluid to provide the required damping force. The correspondence between the GR-J1 and the invention recited in the '259 patent was so obvious that plaintiff conceded prior to trial that claims 1-7, 12, 13, and 15 read on the GR-J1 gyro. Accordingly, with respect to these claims, anticipation is conclusively established, provided the gyros were on sale or sold prior to December 31, 1955.

With respect to the remaining claims (8-11 and 14), however, plaintiff argues that they contain a specific limitation relating to the location of the rotor vanes not present in the GR-J1. In claims 8-11, plaintiff relies on the limitation that the rotor vanes are specified to be "extending generally parallel to said rotation axis and outwardly from said rotor chamber," and in claim 14 to be "extending substantially parallel to said rotation axis and radially from said rotor gimbal.⁴

The location of the GR-J1 rotor vanes differs from the location of the Lemmerman vanes as shown in the preferred embodiment of the patent. In particular, the rotor vanes protrude from the arcuate face (sides) of the rotor cylinder in the preferred embodiment of Lemmerman, while they protrude from the planar (end) face of the rotor cylinder in the GR-J1.

Although the vanes on the GR-J1 are on the end of the cylinder and the Lemmerman vanes are shown as being on the sides of the cylinder, claims 8-11 are not limited with respect to the location of the vanes except that the vanes are said to extend generally parallel to the rotation axis and outwardly from the rotor chamber. If one or more claims had been limited to a structure in which all the vanes extend radially from the arcuate surface of the cylindrical rotor chamber, the GR-J1 would not anticipate such claims. The question, however, is not what the patentee might have claimed, but what he has claimed. E. g., Lewis v. Pennsylvania Steel Co., 59 F. 129, 131-32 (3d Cir. 1893). When the words of a claim are given their normal meaning, the court cannot, in order to sustain its validity, read into it elements or restrictions which are not set out therein. E. g., Wm. B. Scaife & Sons Co. v. Falls City Woolen Mills, 209 F. 210 (6th Cir. 1913). When interpreted in accordance with this principle, the claims of the Lemmerman patent, therefore, fail to distinguish the invention from the GR-J1.

With respect to claim 14, the GR-J1 rotor vanes do not extend "radially from said rotor gimbal." (Emphasis supplied.) Although they do extend radially, they do so from open space, not from the rotor gimbal. It is well established, however, that exact identity between what was sold and what is claimed is not required, e. g., Red Cross Manufacturing Corp. v. Toro Sales Co., 525 F.2d 1135, 1141, 188 USPQ 241, 245 (7th Cir. 1975). See Timely Products Corp. v. Arron, 523 F.2d 288, 302, 187 USPQ 257, 267 (2d Cir. 1975). In the present case the unrebutted testimony of expert witnesses established that the...