Gould Inc. v. United States

• Decision Date: 27 June 1978
• Docket Number: No. 429-74.,429-74.
• Parties: GOULD INC. v. The UNITED STATES.
• Court: U.S. Claims Court

579 F.2d 571

GOULD INC. v. The UNITED STATES.

No. 429-74.

United States Court of Claims.

May 17, 1978.

As Amended on Denial of Rehearing June 27, 1978.

William E. Schuyler, Jr., Washington, D.C., attorney of record, for plaintiff. George P. Edgell, Washington, D.C., Eber J. Hyde, Cleveland, Ohio and Schuyler, Birch, Swindler, McKie & Beckett, Washington, D.C., of counsel.

Claud A. Daigle, Jr., Washington, D.C., with whom was Asst. Atty. Gen. Barbara Allen Babcock, Washington, D.C., for defendant. Vito J. DiPietro, Washington, D.C., of counsel.

Before DAVIS, NICHOLS and KASHIWA, Judges.

OPINION

PER CURIAM:

This case comes before the court on exceptions by the parties to the recommended decision of Trial Judge Joseph V. Colaianni, filed July 29, 1977, pursuant to Rule 134(h), having been submitted on the briefs and oral argument of counsel. Upon consideration thereof, since the court agrees with the trial judge's recommended decision, with a minor deletion by the court, it hereby affirms and adopts^* the decision, as modified, as the basis for its judgment in this case.^**

In adopting the trial judge's opinion, the majority of the court emphasizes that (a) as the trial judge points out, the alleged "experimental" work (on which plaintiff relies) did not involve details which are specifically recited or necessary in the elements of claims 1, 2, 3, or 5 — the only claims now in suit — but other aspects of the "barrel engine" not involved in the inventions described in those claims; (b) as pointed out in In re Yarn Processing Patent Validity Litigation, 498 F.2d 271, 274-275, 282 ff. (5th Cir.), cert. denied, 419 U.S. 1057, 95 S.Ct. 640, 42 L.Ed.2d 654 (1974), there are differing uses of "reduction to practice" and the only form of "reduction to practice" which allows a longer-than-a-year period of "experimental use" under 35 U.S.C. § 102(b) is that which occurs prior to testing for utility or to perfect or complete the invention itself; and (c) the record in this case shows that the inventions in claims 1, 2, 3, and 5 had already been "reduced to practice" in the other sense in that these inventions had already been determined by the patent-holder to be useful and complete in themselves, and that the so-called "experimentation" involved here was directed toward new and other inventions (for which the Government would be licensed under its contracts).

It is therefore concluded that claims 1, 2, 3, and 5 of the Hamlin patent are invalid and that plaintiff is not entitled to recover. The petition is dismissed.

OPINION OF TRIAL JUDGE

COLAIANNI, Trial Judge.

In this patent suit brought pursuant to 28 U.S.C. § 1498, plaintiff, Gould Inc. (hereinafter referred to as "Gould"), seeks "reasonable and entire compensation" for the alleged unauthorized use by the Government of plaintiff's patented invention. The parties have agreed that the issues of infringement and validity of the patent would be determined first. Further, the parties have agreed that the amount of plaintiff's recovery, if any, would be deferred until after a final ruling by the court on the questions of infringement and validity.

The patent in suit, United States Patent No. 3,151,527 (hereinafter referred to as the "Hamlin" patent), was filed as application Serial No. 60,746 on October 5, 1960, and issued on October 6, 1964, to Halley H. Hamlin for an invention entitled "Barrel Engine." Plaintiff Gould by mesne assignments is the successor in interest to the original assignee, Clevite Corporation (hereinafter referred to as "Clevite"), and presently is the owner of all right, title and interest in the patent.

Only claims 1, 2, 3 and 5 are before the court. The remaining claims either are not alleged to be infringed or are conceded to have been reduced to practice under Government contracts which require a license to the Government on all inventions reduced to practice under such contracts. For reasons explained below, it is concluded that claims 1, 2, 3 and 5 are invalid because embodiments of these claims were on sale, within the meaning of 35 U.S.C. § 102(b), more than 1 year before the filing of the patent application.

Background Facts

Around 1953, Clevite, a corporation with a substantial background in torpedo propulsion systems, recognized that the electric propulsion systems then being used in torpedoes had reached a state of development where the amount of power they produced could only be increased through significant increases in the weight and space required for such systems. Therefore, they concluded that nonelectric propulsion systems would need to be developed to achieve the higher speeds being demanded of future generations of torpedoes.

In the period 1953 to 1955, Clevite spent about $30,000 to investigate the feasibility of a gas-driven counterrotating engine being used as an alternate propulsion system. By late 1955, Clevite was ready to demonstrate to the Navy the feasibility of using gas-driven engines as the propulsion system for torpedoes.

This early engine, which developed less than 12 hp., was arranged in a torpedo afterbody with a propeller attached to each of the two counterrotatable output shafts. The afterbody was then mounted within a tank of water. At a November 4, 1955, demonstration, in the presence of naval and Clevite personnel, compressed nitrogen was fed into the engine causing the propellers to rotate in opposite directions and the water in the tank to be forced rearward of the torpedo afterbody.

The Navy was apparently sufficiently impressed with the demonstration to award Clevite contract NOrd 16753 on January 17, 1956, to develop the engine into a solid monopropellant-fueled engine capable of delivering about 30 hp. A second contract, NOrd 17826, to enlarge the engine to about 75 hp., was awarded on May 28, 1957, by the Navy to Clevite. On September 15, 1958, Aerojet-General Corporation (hereinafter referred to as "Aerojet"), working under Navy Contract NOrd 18326 to develop the high performance Mk 46 Mod O torpedo, awarded Clevite a subcontract to again increase (scale-up) the output horsepower of the engine. During the performance of the Aerojet contract, Clevite delivered at least 8 barrel engines to Aerojet and, in addition, quoted prices on even larger quantities. Finally, on October 5, 1960, Clevite filed an application on the inventions embodied in the engine. The claims varied in scope and included coverage of the embodiment developed by Clevite before the first contract with the Government, as well as embodiments and improvements developed under the Government contracts.

Plaintiff has sued only on claims 1, 2, 3 and 5 which are the claims that it contends were reduced to practice before the first Government contract.¹ Among other defenses, defendant alleges that the invention covered by the claims in suit was not reduced to practice until after the first Government contract. Therefore, since defendant is entitled to a license under all inventions first reduced to practice under a Government contract, defendant argues that it is entitled to a license under claims 1, 2, 3 and 5. Second, the Government contends that the claims are invalid because the invention was on sale within the meaning of 35 U.S.C. § 102(b) more than 1 year before the filing date of the application which ultimately matured into the patent in suit. To this second defense, plaintiff responds that its activities were for experimental purposes and thus not "sales" within the meaning of 35 U.S.C. § 102(b).²

As shown hereinbelow, the gas-driven, counterrotating swashplate engine includes a fluid seal assembly 166. Also shown is fluid inlet valve 176. The housing, generally shown by the numeral 12, is connected with shaft 16 for rotation in a first direction. In addition, pistons 146, which are connected to swashplate ring 112, rotate with the housing. Swashplate cam 98 is not only attached to shaft 22, but is also attached by ball bearings to swashplate ring 112. Shaft 22, cam 98 and fluid inlet valve 176 rotate in a direction opposite to the rotation of housing 12 and shaft 16. Briefly, as a result of a force displacing the pistons 146, rotational forces are imposed on swashplate ring 112, and swashplate cam 98, such that the swashplate cam and shaft 22, as well as a propeller which is attached thereto, will rotate in one direction, while swashplate ring 112, housing 12, shaft 16, and a second propeller which will be attached thereto, rotate in the opposite direction.

See following illustration

The Claims

The claims in issue, in indented form for ease of understanding, provide:

1. A barrel engine comprising:

first and

second rotatable means

coaxially mounted and constructed and arranged for counter-rotation;

fluid pressure inlet means positioned coaxially with respect to said rotatable means for introducing fluid pressure into said engine;

motive power means including

a plurality of pistons reciprocatively mounted having their stroke axis parallel to the axial center of rotation, said motive power means being constructed and arranged to translate the fluid pressure into an axial force component; means for converting the axial force component into an angular force component

and to exert the latter upon both of said rotatable means whereby said first rotatable means rotates in one direction and said second rotatable means rotates in opposite direction solely by virtue of the reaction to the rotation of the first rotatable means; and means for connecting both of said rotatable means to individual work absorbing loads.

2. A barrel engine comprising:

first and

second rotatable means

coaxially mounted and constructed and arranged for counter-rotation;

fluid pressure inlet means positioned coaxially with respect to said rotatable means for introducing fluid pressure into said engine;

motive power means including

a plurality of pistons reciprocatively mounted having their stroke axis parallel to the axial center of rotation,

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