Hughes Aircraft Co. v. United States

Decision Date17 December 1980
Docket NumberNo. 426-73.,426-73.
Citation640 F.2d 1193
CourtU.S. Claims Court

Abe Fortas, Washington, D. C., attorney of record, for plaintiff. Sheldon Karon, Victor G. Savikas, Dugald S. McDougall, Chicago, Ill., and John A. Sarjeant, Los Angeles, Cal., of counsel.

James D. Stokes, Jr., Washington, D. C., with whom was Asst. Atty. Gen. Alice Daniel, Washington, D. C., for defendant. Thomas J. Byrnes, Dept. of Justice, Washington, D. C., Major Milburn K. Concannon, Jr. and Vince Cleary, Dept. of the Air Force, and Robert Kinberg, Washington, D. C. and Paul F. McCaul, National Aeronautics and Space Administration, of counsel.

Before FRIEDMAN, Chief Judge, SKELTON, Senior Judge,* and KUNZIG, Judge.


FRIEDMAN, Chief Judge:

This is a suit under 28 U.S.C. § 1498 (1976) seeking damages for the alleged infringement of plaintiff's patent No. 3,758,051 by the United States. After trial, Trial Judge Colaianni held that the patent is invalid under 35 U.S.C. § 102(b) (1976), which bars the issuance of a patent if "the invention was ... described in a printed publication ... or in public use ... in this country, more than one year prior to the date of the application for patent."

Upon the plaintiff's exceptions to that decision, we reject the trial judge's conclusion and remand the case to him to determine the other issues in the case.1


Following the Soviet Union's launching in 1957 of SPUTNIK, the world's first artificial satellite, the Department of Defense and the National Aeronautics and Space Administration accelerated their efforts to create an effective synchronous satellite. A synchronous satellite is one whose orbital period is equal to the rotational period of the earth; the satellite would "hover" above a single, fixed point on earth. The satellite must be placed in a west-to-east orbit having a 22,750 nautical mile radius from the center of earth and a linear velocity of 10,090 feet per second.

In order to conserve weight and energy, communications satellites are equipped with directional antennas, and communication with earth is possible only when the satellite is oriented or positioned so that the directional beam can strike earth. Similarly, the solar cells used as a power source work most effectively when they are directed toward the sun. It is therefore essential that the communications satellite be equipped with a control system by which the proper orientation may be maintained.

The patent involved in this case — which Williams invented and assigned to the plaintiff — provides a sophisticated method for changing and therefore controlling the orientation of a satellite (also known as its attitude) in flight. In oversimplified terms, the invention consists of a process by which the orientation of the satellite can be changed in flight by the discharge from the satellite through openings on its surface of synchronized jet blasts of gas into the atmosphere. The proper timing and duration of those blasts are controlled through radio signals transmitted to the satellite from earth that activate and time the blasts. These instructions are sent following the receipt on earth of radio signals from the satellite that indicate the position and attitude of the body, on the basis of which calculations are made on earth which determine the instructions sent to the satellite. The control signals sent from earth are synchronized with the spin cycle of the satellite, thereby activating the jet pulses in the proper phase of the spin cycle.

Williams filed his first application for a patent of the foregoing invention in April 1960. This application claimed the device described above, but did not describe the means to be used on earth to receive information from the satellite, make calculations, and transmit instructions to the satellite. After extensive proceedings before the Patent Office, in which the application was amended several times in attempts to satisfy the questions and doubts of the patent examiner, on April 21, 1964, Williams filed a continuation-in-part (CIP) application, on the basis of which the patent issued in September 1973.

A CIP application may contain subject matter from a prior application and additional matter not disclosed in the earlier application. Under 35 U.S.C. § 120 (1976), any new matter in the CIP application has the filing date of that application; the earlier filing date of the prior application covers only material in the CIP application that also was disclosed in the prior application. The Williams CIP application for the first time described and disclosed in a drawing (Figure 12 of the application) the control device on earth that received radio signals from and transmitted them to the satellite.

In 1962, more than a year prior to the filing of the CIP application, Williams had described his invention in a paper given before the American Astronautical Society, and the invention had been publicly used in the SYNCOM satellite launched by the United States in 1963.

The patent that issued on the CIP application contains three claims, described below. If any of these claims in fact claims the Figure 12 control device as an element of the patented invention, the patent concededly is invalid under 35 U.S.C. § 102(b), because of the public disclosure of the invention more than a year before the CIP application was filed. The trial judge held that the patent does claim the control device and therefore is invalid. We reach a contrary conclusion.


A. The governing principles are well-settled; the dispute is over their application to the facts here. Under 35 U.S.C. § 112 (1976), a patent application must include a specification containing

a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art ... to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

The section further provides that the specification "shall conclude with one or more claims, particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." "The claims made in the patent are the sole measure of the grant." Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 600, 5 L.Ed.2d 592 (1961). See also Interdent Corp. v. United States, 209 Ct.Cl. 301, 306, 531 F.2d 547, 550 (1976).

The claims define the inventive concept that the patent embodies. The specifications, on the other hand, are designed to reveal how the invention may be put into practice, thereby defining the inventor's monopoly and enabling others to practice the invention after the patent has expired. Although "it is fundamental that claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention," United States v. Adams, 383 U.S. 39, 49, 86 S.Ct. 708, 713, 15 L.Ed.2d 572 (1966), courts do "not read limitations into claims merely because they are disclosed in the specifications," In re Walter, 618 F.2d 758, 768 (C.C.P.A.1980). See also In re Prater, 415 F.2d 1393, 1404 (C.C.P.A.1969) (specifications properly used to "interpret limitations explicitly recited in the claim").

B. The Williams patent contains three claims.

The pertinent portion of claim 1, the broadest of the allowed claims, is as follows:

1. Apparatus comprising:
* * * * * *
e. means disposed on said body for providing an indication to a location external to said body of the instantaneous spin angle position of said body about said axis and the orientation of said axis with reference to a fixed external coordinate system;
f. and means disposed on said body for receiving from said location control signals synchronized with said indication;
g. said valve being coupled to said last-named means and responsive to said control signals for applying fluid to said fluid expulsion means in synchronism therewith for precessing said body to orient said axis in a predetermined desired relationship with said fixed external coordinate system.

Insofar as they are material in this case, the only differences between these clauses in claims 1, 2, and 3 is that the word "means" in clause e of claim 1 is changed to "wide angle means" in claim 2 (clause f) and to "wide angle optical means" in claim 3 (clause e).

These claims do not incorporate the ground control device depicted in Figure 12. The trial judge stated that

what is being claimed by elements (e)-(g) is 1 apparatus carried by the satellite for transmitting information about its spin angle position to an external location, i. e., earth; 2 externally located apparatus for producing control signals which are synchronized with the spin angle position of the satellite; and 3 apparatus on the satellite for responding to the received control signals for precessing the satellite.

But only the first and third of these three apparatuses are stated in the language of those clauses.

The claims do not refer to any "externally located apparatus." The only references in the claims to anything external to the satellite are to "means disposed on said body for providing an indication to a location external to said body" and to means on the body for receiving signals "from said location" (items e and f, emphasis added). Although some devices and processes are necessary at the external location to receive and process the information sent there by the clause e "means" and to return the instructions relied on by the clause f "means," the claims themselves do not embody any specific devices or processes outside the satellite.

The claims of the patent cover solely the orbiting satellite and no other object, device, means, or apparatus. The patent claims only an "apparatus comprising ... a body adapted to spin about an axis" (claim 1, clause a), with certain specified...

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