International Glass Company v. United States

• Decision Date: 14 March 1969
• Docket Number: No. 62-65.,62-65.
• Citation: 408 F.2d 395,159 USPQ 434
• Parties: The INTERNATIONAL GLASS COMPANY, Inc. v. The UNITED STATES.
• Court: U.S. Claims Court

159 USPQ 434, 408 F.2d 395 (1969)

The INTERNATIONAL GLASS COMPANY, Inc. v. The UNITED STATES.

No. 62-65.

United States Court of Claims.

March 14, 1969.

Marvin Usdin, New York City, attorney of record, for plaintiff.

Howard B. Rockman, Washington, D. C., with whom was Asst. Atty. Gen. William D. Ruckelshaus, for defendant.

Before COWEN, Chief Judge, and LARAMORE, DURFEE, DAVIS, COLLINS, SKELTON and NICHOLS, Judges.

OPINION

PER CURIAM:

This case was referred to Trial Commissioner James F. Davis with directions to make findings of fact and recommendation for conclusions of law under the order of reference and Rule 57(a). The commissioner has done so in an opinion and report filed on July 23, 1968. Plaintiff, while accepting the presentation of facts in the report of the commissioner as being correct and proper, filed exceptions to the commissioner's opinion and recommended conclusion of law. The case has been submitted to the court on oral argument of counsel and the briefs of the parties. Since the court agrees with the commissioner's opinion, findings and recommended conclusion of law, as hereinafter set forth, it hereby adopts the same as the basis for its judgment in this case. Therefore, plaintiff is not entitled to recover and the petition is dismissed.

OPINION OF COMMISSIONER

DAVIS, Commissioner:

This is a patent suit under 28 U.S.C. § 1498 to recover "reasonable and entire compensation" for alleged unauthorized use for the Government of plaintiff's patented invention. Only the issue of liability is before the court; accounting, if any, is deferred to later proceedings. Plaintiff contends that claims 1-4 and 6 of its patent are infringed by Boeing Aircraft Company (hereafter "Boeing") and Rohr Corporation (hereafter "Rohr"), both of which made airplane parts for defendant within the statutory recovery period.

The issues before the court are patent validity under 35 U.S.C. §§ 102 and 103 and patent infringement. In particular, defendant contends that claims 1-4 are invalid under sections 102(g) and 103; that claims 1 and 3 also are invalid under section 102(a) or (b); and that claim 6 is not infringed.¹

Patent in suit

The patent in suit, issued in 1953 to plaintiff and entitled "Mounting Method," relates to method and apparatus for holding workpieces, such as gem stones, to a work station for treatment, such as grinding, polishing or buffing. In essence, the workpiece is frozen to the station. The patent specification says (emphasis added):

This invention is concerned with a method for temporarily mounting work pieces, particularly of minute dimension, and hence, difficultly manageable, for application of treatments requiring exposure of at least some of the surfaces of the work. The invention is particularly useful in connection with the grinding and polishing or buffing of materials such as glass, plastics and/or metal in the manufacture of ornamental and industrial jewels, imitation stones, lens, beads, bearings, buttons and the like.

* * * * * *

Work to be treated is bonded in accordance with this invention to a work support with a low temperature bond induced by interposing a film of a material which is liquid at normal room temperatures, preferably water, between the work piece and work support and freezing the liquid into an ice bond, if it be water, which is maintained during manufacturing operations performed on remaining exposed surfaces of the work. The work is quickly released merely by melting the ice bond by application of heat.

* * * * * *

While water or any aqueous vehicle is the most inexpensive and satisfactory bonding material for use in my invention, I do not exclude the use of other materials, liquid at normal room temperatures and having freezing points at or above about 32° F., for example, acetic acid, benzol, glycerine, and some of the relatively high freezing point oils.

* * * * * *

One embodiment of an apparatus for practicing the invention (illustrated and described in finding 5) comprises a metal rod, called a dopstick, mounted in a housing. The rod has a conical-shaped depression, or dop,² at its lower end for receiving a gem stone. A refrigerant chamber surrounds the lower part of the dopstick; the upper part is offset like a crank handle for rotation by an indexing device to turn the workpiece. In operation, before a gem stone is mounted at the end of the dopstick, water is sprayed onto the surface of the conical recess. With the stone inserted, refrigerant is circulated through the housing. Since the dopstick is metal, a good heat conductor, the water is frozen quickly and the stone secured in place. The stone is buffed or polished by an abrasive belt, then the dopstick is rotated, thereby to expose the stone's different facets for treatment. Thereafter, the ice bond is thawed either by passing warm fluid through the refrigerant chamber or by applying "localized" heat to the ice bond. The stone is then turned over and refrozen into place or another stone inserted.

The only apparatus disclosed in the patent specification for applying "localized" heat is a "high frequency coil" into which the lower end of the dopstick is mounted. When energized the coil heats the dopstick. By applying "localized" heat, rather than discontinuing refrigerant flow and warming the refrigerant chamber, a workpiece can be released quickly, turned or replaced, and refrozen without interrupting the refrigeration process. According to the patentee, this technique, as opposed to warming the refrigerant chamber, is "more efficient," is preferred, and is the subject of claim 6, later discussed in detail.

The patent has 11 claims, both to apparatus and method. Only claims 1-4 and 6, all to method, are in issue. Claims 1 and 6, set out below in outline form, are representative:

1. The method of temporarily rigidly mounting difficultly manageable work-pieces on supports for application of precision treatments to exposed surfaces of the mounted work-pieces which comprises interposing a material which is liquid at normal room temperature between and in contact with a work-piece and a work-receiving surface of a work-support at a temperature not substantially exceeding normal room temperature, and

withdrawing heat from said liquid at least in part by conduction through said support until said liquid is frozen at a temperature below room temperature, and forms a rigid work-piece-to-support frozen bond and thereafter

treating an exposed surface of the work-piece while maintaining the temperature of said bond below the freezing point of said material.

6. The method of temporarily rigidly mounting difficultly manageable work-pieces on supports for application of precision treatments to exposed surfaces of the mounted work-pieces which comprises

circulating a refrigerant in heat exchanger relation with the support to maintain the temperature of a work-receiving surface of the support normally below room temperature,

applying heat locally to said surface to raise its temperature at least momentarily while interposing a material which is liquid at normal room temperature and has a freezing point above the maintained temperature of said surface, between and in contact with a work-piece and said surface, and then

discontinuing the application of said heat to freeze said liquid on said chilled work-receiving surface and form a rigid work-piece-to-support frozen bond and

treating the exposed surfaces of the work-piece while maintaining the temperature of said bond below the freezing point of said material.

Claim 3 is similar to claim 1 but specifies the "liquid" as "water" and states that the temperature of the bond is maintained "below 0° C." which is the freezing point of water. Claims 2 and 4 are similar to claims 1 and 3, respectively, but add as a final step "breaking the bond by applying heat" to thaw the ice.

Plaintiff introduced no evidence at trial that the patented apparatus and method were ever used by the jewelry industry, nor that a license was ever granted under the patent, though plaintiff, without success, solicited licenses from several companies in various industries, including the aircraft industry. The patent is thus a "paper patent," a fact having significance to the breadth to be given its construction. American Cyanamid Co. v. Hercules, Inc., 260 F.Supp. 368, (D.Del.1966); IV Walker, Patents § 229 (Deller's 2d ed. 1964).

The alleged infringing process

The process used by Boeing and Rohr and alleged to infringe is the so-called "ice chuck" process for machining honeycomb material.

Honeycomb, as the name implies is an open-celled structure with thin aluminum or steel walls, about 0.001 to about 0.005 inches (1 to 5 mils) thick. Honeycomb is strong in compression in the direction parallel to the cell walls and is very light per unit volume. It is therefore a useful support filler to sandwich between upper and lower surfaces of airfoils, such as helicopter rotor blades. Honeycomb comes in pieces about 5 feet long and several inches thick. Before useful as filler, the pieces must be shaped by machining to the contour of the airfoil. Machining is difficult, however, since honeycomb is fragile and the cell walls are easily torn or deformed by usual grinding or cutting. Also, pieces cannot be anchored as in usual machining operations e. g., by clamps, without damaging cell walls.

The ice-chuck method is a solution to difficulties of machining honeycomb. Boeing's method in essence is to fill up the honeycomb with water, freeze it solid to a work platform, then machine the frozen block to proper contour. The block is then thawed, the honeycomb piece turned over, and the process repeated. The final honeycomb piece thus has the proper shape for airfoil filler. In short, Boeing's method does two things: It secures the honeycomb to a work platform, thus solving the clamping problem; and the ice which fills all the cells of the honeycomb supports the cell walls during machining to...