Hughes Aircraft Co. v. U.S.
| Decision Date | 20 September 1983 |
| Docket Number | No. 426-73,426-73 |
| Citation | 717 F.2d 1351,219 USPQ 473 |
| Parties | , 31 Cont.Cas.Fed. (CCH) 71,526 HUGHES AIRCRAFT COMPANY, Appellant, v. The UNITED STATES, Appellee. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Philip W. Tone, Chicago, Ill., argued for appellant. With him on the brief were Sheldon Karon, Victor G. Savikas, Thomas D. Rosenwein, Dugald S. McDougall, Keith V. Rockey, Chicago, Ill., and John A. Sarjeant, El Segundo, Cal.
James D. Stokes, Jr., Washington, D.C., argued for appellee. With him on the brief were J. Paul McGrath, Asst. Atty. Gen., Vito J. DiPietro, Director and Thomas J. Byrnes, Washington, D.C., of counsel.
Before MARKEY, Chief Judge, and DAVIS and BALDWIN, Circuit Judges.
Hughes Aircraft Company (Hughes) appeals that part of a judgment 1 of the United States Claims Court finding non-infringement of U.S. patent No. 3,758,051 (the Williams patent) by the government's "store and execute" (S/E) spacecraft. The government appeals that part of the judgment holding claims 1, 2, and 3 of the patent valid. We affirm-in-part, reverse-in-part, and remand for a determination of the quantum of recovery for infringement by the accused SKYNET II, NATO II, DSCS II, IMP (H and J), SOLRAD (9 and 10), and PIONEER (10 and 11) 2 spacecraft.
The Williams patent for "Velocity Control and Orientation of a Spin-Stabilized Body", issued to Donald D. Williams on September 11, 1973, on application serial No. 391,187, filed August 21, 1964, a continuation-in-part of now-abandoned application serial No. 22,733, filed April 18, 1960.
Throughout the late 1950's and early 1960's, the Department of Defense and the National Aeronautics and Space Administration (NASA) engaged in an intense effort to build a synchronous communications satellite with an orbital period equalling the rotational period of the earth. The goal was a satellite moving in a west-to-east orbit with a radius of 22,750 nautical miles and having a linear velocity of 10,090 feet per second, so that it could "hover" above a fixed point on earth.
Despite huge expenditures, the government never solved the technical problem of attitude control. That problem is described as the need to orient the satellite in space, without exceeding weight limitations, while insuring that (1) its directional antennas were always pointed toward the earth, and (2) that it would obtain a reliable, adequate fuel supply from the sun.
Working for Hughes, Williams solved the problem. He created a practical system for attitude control of a spin-stabilized satellite. In the Williams system, signals sent by a ground crew control the satellite by causing a jet on the satellite to pulse at a selected satellite position in successive spin cycles, thereby "precessing" the satellite in a selected direction. Williams taught how a jet valve on the satellite's periphery could discharge gas in brief, successive pulses on command. He taught that an on-board V-beam sun sensor (vertical slit and canted slit) could collect raw data from the sun and transmit it to earth, enabling a ground crew to determine the satellite's existing and desired orientations.
When, using conventional radio signals, the ground crew pulses the attitude jet, torque is applied to the satellite and its spin axis is "precessed" parallel to the earth's axis, causing the beam of the satellite's antenna to point to the earth continuously during the 24-hour period of each orbit, and insuring that the satellite's solar cells receive maximum light from the sun.
On April 2, 1960, Williams successfully operated a laboratory model, known as the "dynamic wheel", in demonstration of his invention. See Williams v. Administrator of NASA, 463 F.2d 1391, 1395-96, 175 USPQ 5, 8-9 (Cust. & Pat.App.1972), cert. denied, 412 U.S. 950, 93 S.Ct. 3013, 37 L.Ed.2d 1003 (1973).
Hughes disclosed the invention to NASA, seeking its participation in building a satellite with the unique attitude control system. In its "Sole Source Justification", NASA stated:
Hughes has submitted the only proposal to NASA indicating that a 24-hour lightweight synchronous satellite having Utilization of the development team and design approaches established at Hughes will result in a savings in time and money to the Government. It is therefore recommended that a sole source procurement of a spacecraft for Project SYNCOM be awarded to Hughes Aircraft Corporation.
a two-way voice communication capability is practicable. This design is achieved through the use of a unique attitude and orbital velocity vernier system which allows an optimized communication system to meet the requirements for two-way voice communication within the weight limitations.
In August, 1961, Hughes and NASA entered a contract for engineering and construction of the SYNCOM satellite. On July 26, 1963, SYNCOM II, the world's first synchronous communications satellite, was launched and placed in orbit. On July 31, 1963, the attitude control system was successfully employed and radio transmission continued 24 hours per day.
On April 18, 1960, Williams had filed the parent application of that which resulted in the Williams patent. The examiner allowed some claims, but rejected others based on prior art and an inadequate disclosure of ground control apparatus. Williams' proffered amendments were denied entry as containing new matter.
On August 21, 1964, Williams filed a continuation-in-part (CIP) application. The CIP added to the parent disclosure a Figure 12 and a description of the structure it illustrated, i.e., a ground-based analog controller for synchronizing the force applied to the satellite with the satellite's spin cycle.
On January 10, 1966, the examiner rejected all claims under 35 U.S.C. Sec. 103 as unpatentable over earlier cited art and newly cited U.S. patent No. 3,216,674 entitled "Proportional Navigation System for a Spinning Body in Free Space", issued November 9, 1965 to McLean and disclosing a spin-stabilized, target-seeking space vehicle having a jet motor on its periphery. The motor, controlled by an infrared sensor, automatically precessed the vehicle to keep its spin axis pointed toward the target.
The McLean vehicle for steering a collision course to a target is self-contained and self-guiding. When the target is aligned with the vehicle's spin axis, photodetector 22 detects a constant infrared radiation, producing a constant signal. If the target moves from alignment, detector 22 provides an alternating signal, to fire precessing jet 16 at the point in the vehicle's spin cycle that will precess the spin axis back toward the target.
By amendment filed April 29, 1966, Williams canceled the rejected broad claims and inserted three independent claims that became claims 1-3 of the patent in suit. Representative claim 1 reads:
1. Apparatus comprising:
a. a body adapted to spin about an axis;
b. fluid supply means associated with said body;
c. a valve connected to said fluid supply means;
d. fluid expulsion means disposed on said body and coupled with said valve and oriented to expel said fluid substantially along a line parallel to said axis and separated therefrom;
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.
unquestionably met the requirements for actual reduction to practice. Hughes' experts promptly adapted the present attitude control system in place of a different system originally planned for its Comsat program, which it was offering to government agencies and others. NASA, obviously as the result of consideration by its technical staff and advisors of the program and the Hughes activities under it, including the dynamic wheel test, entered into the 1961 contract for the Syncom program at the risk of millions of dollars.
For the above reasons, we conclude that the invention was actually reduced to practice before, and outside of, the NASA contract and that the board's determination to the contrary was erroneous. [Williams v....
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