Hughes Aircraft Co. v. US

• Decision Date: 07 April 1998
• Docket Number: No. 94-5149,95-5001.,94-5149
• Parties: HUGHES AIRCRAFT COMPANY, Plaintiff-Appellant, v. The UNITED STATES, Defendant/Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

140 F.3d 1470

HUGHES AIRCRAFT COMPANY, Plaintiff-Appellant, v. The UNITED STATES, Defendant/Cross-Appellant.

Nos. 94-5149, 95-5001.

United States Court of Appeals, Federal Circuit.

April 7, 1998.

Kenneth W. Starr, Kirkland & Ellis, Washington, DC, argued for plaintiff-appellant. With him on brief were Jay I. Alexander, and Christopher Landau, Washington, DC; and Philip C. Swain, Los Angeles, CA. Also on the brief were Victor G. Savikis, Jones, Day, Reavis & Pogue, Los Angeles, CA; and John J. Higgins and Wanda K. Denson-Low, Hughes Aircraft Company, Los Angeles, CA.

Thomas J. Byrnes, Asst. Director, Commercial Litigation Branch, Civil Division, Dept. of Justice, Washington, DC, for defendant-cross appellant. With him on brief were Frank W. Hunger, Asst. Atty. Gen., and Vito J. DiPietro, Director. Of counsel on the brief were B. Frederick Buchanan, Jr. and William C. Bergmann, Attys., Dept. of Justice, Washington, DC.

Before RADER, Circuit Judge, ARCHER, Senior Circuit Judge,^* and BRYSON, Circuit Judge.

ARCHER, Senior Circuit Judge.

This case returns to this court after the Supreme Court's vacatur and remand of Hughes Aircraft Co. v. United States, 86 F.3d 1566, 39 USPQ2d 1065 (Fed.Cir.1996) (Hughes XIII), in light of the Court's decision in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). See United States v. Hughes Aircraft Co., ___ U.S. ___, 117 S.Ct. 1466, 137 L.Ed.2d 680 (1997) (Hughes XIV). Because Hughes Aircraft Co. v. United States, 717 F.2d 1351, 219 USPQ 473 (Fed.Cir.1983) (Hughes VII) satisfies the legal requirements announced in Warner-Jenkinson, we affirm.

BACKGROUND

Hughes Aircraft Company (Hughes) commenced this suit in 1973 under 28 U.S.C. § 1498, asserting that the United States infringed Hughes' United States Patent No. 3,758,051 issued to Williams (the Williams patent). The Williams patent relates to an apparatus for control over the orientation, or attitude, of a spacecraft using commands from a ground control station. The relevant limitations of claim 1 of the Williams patent read:

(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 lastnamed 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 into a predetermined desired relationship with said fixed external coordinate system.

(Emphasis added). In order to correct the attitude of the spacecraft, the ground crew must be able to calculate the instantaneous spin angle (ISA) position. The ISA position is the angle between two specific planes. The first plane, the rotating plane, is defined by the location of the precessing jet and the satellite's axis of rotation. The second plane, the reference plane, is defined by a fixed reference point in an external coordinate system (such as the sun or another star) and the spin axis. The angle between these planes at a given moment in time is the ISA position with reference to a fixed external coordinate system. Thus, the ISA position generally measures the location of the precessing jet in its rotational cycle relative to the reference plane.

Two pieces of information are needed to calculate the ISA position: the spin rate of the satellite and the instant in time at which the rotating plane passes by the fixed point in the fixed external coordinate system and at which the jet is closest to the fixed reference point. The invention uses on board sensors to collect this data and then transmits this information to earth to allow the ground crew to determine the satellite's existing and desired orientations. After making the necessary calculations, the ground crew pulses the attitude jet by radio signal commands to precess, or tip, the spin axis of the satellite to the desired position.

In the accused "store and execute" (S/E) craft, the satellite retrieves the same raw data but calculates the ISA position onboard. The spin rate and information to determine the orientation of the satellite is transmitted to the ground. In most of the S/E craft, the satellite does not provide information sufficient to calculate the ISA position.¹ After receiving the spin rate, the ground crew performs the necessary calculations to adjust the attitude of the craft. This information is then sent to and stored in the satellite. The precession does not occur, however, until the ground crew sends an execute command to the satellite.

In 1982, the then-Court of Claims originally determined, inter alia, that the accused S/E devices did not infringe the patent literally or under the doctrine of equivalents. See Hughes Aircraft Co. v. United States, 215 USPQ 787, 812 (Ct.Cl. Trial Div.1982) (Hughes VI). On appeal, this court reversed the noninfringement judgment, holding that the S/E devices infringe under the doctrine of equivalents, and remanded for a determination of just compensation. See Hughes VII, 717 F.2d at 1366, 219 USPQ at 484. After the decision by the Court of Federal Claims on remand, Hughes appealed, challenging the assessment of damages, and the government cross-appealed, again challenging the liability determination of Hughes VII in light of this court's in banc decision in Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 4 USPQ2d 1737 (Fed.Cir.1987) (in banc). See Hughes XIII, 86 F.3d at 1566, 39 USPQ2d at 1066 (Fed.Cir.1996). This court affirmed the damages determination and refused, under the doctrine of law of the case, to reconsider the Hughes VII decision. See id. at 1576, 39 USPQ2d at 1072. The Supreme Court, however, granted certiorari, vacated the judgment, and remanded the case (GVR order) to this court for reconsideration in light of its decision in Warner-Jenkinson. See Hughes XIV, ___ U.S. at ___, 117 S.Ct. at 1466.

DISCUSSION

I.

As a threshold matter, we must address the scope of the Supreme Court's GVR order. Generally, the Supreme Court will issue a GVR order:

where intervening developments, or recent developments that we have reason to believe the court below did not fully consider, reveal a reasonable probability that the decision below rests upon a premise that the lower court would reject if given the opportunity for further consideration, and where it appears that such a redetermination may determine the ultimate outcome of the litigation....

Lawrence v. Chater, 516 U.S. 163, 167, 116 S.Ct. 604, 607, 133 L.Ed.2d 545 (1996) (per curiam); see also Lords Landing Village Condominium Council of Unit Owners v. Continental Ins. Co., ___ U.S. ___, ___, 117 S.Ct. 1731, 1732, 138 L.Ed.2d 91 (1997) (per curiam). The use of a GVR order "assists the court below by flagging a particular issue that it does not appear to have fully considered." Lawrence, 516 U.S. at 167, 116 S.Ct. at 606. Vacatur and remand by the Supreme Court, however, does not create an implication that the lower court should change its prior determination. See United States v. M.C.C. of Florida, Inc., 967 F.2d 1559, 1562 (11th Cir.1992) ("The Supreme Court did not take a position on whether Tull v. United States, 481 U.S. 412, 107 S.Ct. 1831, 95 L.Ed.2d 365 (1987) actually affected the outcome of M.C.C. I, but was instructing this court to make that determination."); United States v. National Soc'y of Prof'l Eng'rs, 555 F.2d 978, 982 (D.C.Cir.1977), aff'd, 435 U.S. 679, 98 S.Ct. 1355, 55 L.Ed.2d 637 (1978).

The government argues that the Supreme Court effectively vacated both Hughes VII and Hughes XIII; thus, this court is to review anew the trial court's judgment in Hughes VI. Hughes responds that only Hughes XIII was vacated and that the only issue before this court is whether Warner-Jenkinson provides a compelling reason to depart from the law of the case established by Hughes VII.

We conclude that the scope of our review on remand is limited to determining whether Hughes VII satisfies the legal analysis required by Warner-Jenkinson.² A GVR order "merely requires further consideration in light of a new Supreme Court decision" and does not "nullify all prior proceedings." M.C.C., 967 F.2d at 1561. Nothing in the petition for a writ of certiorari suggests the sweeping effect posited by the government. Indeed, in its petition, the government argued that "an intervening decision of the Supreme Court, rather than the court of appeals, obviously would provide a more compelling basis for that court's departure from the law of the case on remand." Petition for Writ of Certiorari at 11 n. 5, Hughes XIV (No. 96-1297). Thus, the government itself recognized that its petition was not a request for a vacatur of both Hughes VII and Hughes XIII but rather was limited to a vacatur of the latter. Had the Supreme Court intended to reinstate the trial court's judgment, it could have explicitly done so. See Union Pacific R.R. Co. v. Johnson, 249 F.2d 674, 676 (9th Cir.1957).

II.

Turning to the merits, we first address the effect of the "all-elements" rule (sometimes referred to as the "all-limitations" rule) enunciated in Warner-Jenkinson on the Hughes VII decision. The Supreme Court clarified the doctrine of equivalents by noting that:

each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety.

520 U.S. at ___, 117 S.Ct. at 1049. Thus, the test for...