Jamesbury Corporation v. United States

• Decision Date: 11 July 1975
• Docket Number: No. 189-63,520-71.,189-63
• Citation: 518 F.2d 1384
• Parties: JAMESBURY CORPORATION v. The UNITED STATES.
• Court: U.S. Claims Court

518 F.2d 1384

JAMESBURY CORPORATION v. The UNITED STATES.

Nos. 189-63, 520-71.

United States Court of Claims.

July 11, 1975.

Robert F. Conrad, Robert C. Miller, Arlington, Va., Atty. of record, for plaintiff.

Thomas J. Byrnes, Washington, D. C., with whom was Asst. Atty. Gen. Rex E. Lee, for defendant.

Before COWEN, Chief Judge, LARAMORE, Senior Judge, and BENNETT, Judge.

OPINION

PER CURIAM:

These consolidated cases come before the court on defendant's exceptions to the opinion and recommended decision, filed May 16, 1967 pursuant to then Rule 57(a), by then Commissioner Donald E. Lane (now Judge of the United States Court of Customs and Patent Appeals) and to the supplemental opinion and recommended decision, filed September 20, 1974 pursuant to Rule 134(h), by Trial Judge Joseph V. Colaianni. The court has considered the cases on the briefs and oral argument of counsel. Since the court agrees with the opinions, findings of fact and recommended decisions filed May 16, 1967, and September 20, 1974, as hereinafter set forth, it hereby affirms and adopts them as the basis for its judgment in these cases. Therefore, the court concludes as a matter of law that claims 7 and 8 of United States Letters Patent No. 2,945,666 are valid and have been infringed by the defendant's unauthorized use of ball valves produced by the Electric Boat Division of General Dynamics Corp. and by Worcester Valve Co., Inc., and that plaintiff is entitled to recover reasonable and entire compensation therefor. Accordingly, judgment is entered for plaintiff with the amount of recovery to be determined pursuant to Rule 131(c)(2).

OPINIONS OF TRIAL JUDGES

LANE, Commissioner:

This is a patent suit under Title 28 U.S.C. § 1498 to recover reasonable and entire compensation for the unauthorized use or manufacture by or for the defendant of a patented invention. Plaintiff specifically alleges that ball valves manufactured by Electric Boat Division, General Dynamics Corp. and by Worcester Valve Co., Inc., and procured and used by the defendant embody an invention defined in varying scope in patent claims 7 and 8 of U.S. Letters Patent No. 2,945,666, entitled "Ball Valve." Said patent, referred to hereafter as the patent in suit, issued to plaintiff on July 19, 1960, on an application for patent filed February 14, 1958, which was a continuation in part of a parent application filed June 11, 1954. After the trial on liability was completed with briefs and requested findings being submitted, plaintiff's ownership of the patent in suit was put in issue by E. W. Bliss Co. in the United States District Court for the District of Massachusetts. In view of the suit in Massachusetts, the parties have stipulated to stay action on the present suit, after commissioner's report has been filed, until the ownership issue has been settled in the Massachusetts District Court. Plaintiff has agreed to dismiss the present suit if the District Court finds against plaintiff on the issue of ownership. The parties have also agreed to defer trial of any accounting issues until the issues of patent infringement and patent validity are decided.

It is concluded that claims 7 and 8 of the patent in suit are valid and that ball valves manufactured by both the Electric Boat Division, General Dynamics Corp., and by Worcester Valve Co. which were procured and used by the defendant infringe said patent claims.

The patent in suit describes and claims an improved ball valve. A ball valve is used to control the flow of liquids and gases in pipelines and includes a casing adapted to be connected to a pipeline and having a valve chamber with both an inlet and an outlet opening. A ball having a passage extending through it is mounted for rotation in the valve chamber. In one position of rotation, the passage in the ball is aligned with the inlet and outlet openings to permit fluid flow through the ball valve and in another position of rotation, the passage is positioned at right angles to the inlet and outlet openings in the valve casing to prevent the flow of fluid.

Prior to the development of the plaintiff's patented valve, ball valves were not generally accepted or used by industry. In early ball valves, the ball with a passage extending therethrough was tightly journaled into the valve chamber. Temperature variations, pressure variations, and/or valve wear, either caused the valve to leak or made it extremely difficult to operate by rotating the ball between open and closed position. Attempts to solve this problem were made by journaling the ball against some material, preferably nonmetallic, in what were known as compression sealing rings placed about the outlet opening and about the inlet opening. The ball was truncated on each side where the passage ends and reduced ball pressure resulted when the ball was placed so that the passage lines up with the openings in the casing in the open valve position. When the ball was rotated to a closed position, the nontruncated portion of the ball pressed into the material of the sealing rings with sufficient force to provide a fluid tight seal. These compression sealing rings made no provision for expansion or contraction of the ball or casing and for valve wear. Compression sealing rings did compensate somewhat for the problems of leakability and ease of ball rotation but not adequately for use in modern industry.

The ball valve which is the subject matter of the patent in suit solved the problems of temperature variation, pressure variation, and valve wear. The patented ball valve employs a novel sealing ring utilizing a principle different from the compression sealing rings which seal by the nontruncated portion of the ball pressing into the material of the sealing rings. The sealing ring of the patent in suit has a portion which flexes with respect to the remainder of the sealing ring and which is known as a lip. This lip projects inward with a graduated stiffness due to its increasing cross sectional shape in the radial direction. The lip is prestressed which causes it to flex into sealing contact or engagement with the ball even when the ball is being rotated. For a more detailed explanation of the patent in suit see finding 10.

After the patented valve was described in several trade journals, over 1,000 inquiries were received which later became purchase orders for the valve. This flow of inquiries and orders grew so fast that plaintiff could not keep up with production orders. Plaintiff grew from a corporation having 3 or 4 employees at the time of the announcement in 1954 to over 550 employees at the time of trial in January 1966. Over 3 million ball valves valued at over $50 million were sold since the announcement in 1954.

In the summer or fall of 1957, an engineer from the Portsmouth Navy Yard approached plaintiff about the possible use of the plaintiff's valve on Navy submarines. Increased size and better hull construction enable the modern submarine to navigate at greater depths. Valves must operate under greatly increased pressure, be able to withstand hydraulic shock caused by depth charges permit fluids to flow silently, work under problems of corrosion and erosion with sea water, and be remotely operable. No other valve in industry or in prior submarine service except the plaintiff's valves solved all of these problems.

At the request of the Portsmouth Navy Yard, plaintiff's engineers lectured on the theory and function of ball valves to the engineers of the Electric Boat Division, General Dynamics Corp. which was building nuclear submarines but had no ball valves or even contemplated using them. In April 1958, Electric Boat informed plaintiff that they were going to make their own ball valves and no longer needed plaintiff.

Nylon and teflon were available well before plaintiff's ball valve was developed, and defendant's contention that the commercial success of the patented valve resulted from the availability of nylon and teflon is without merit.

Defendant has interposed the usual defenses of the invalidity and/or noninfringement of claims 7 and 8 of the patent in suit. In interposing these defenses defendant's major contention is that because of the prosecution history of claims 7 and 8 of the patent in suit, the clear language of these claims must be limited. More specifically, defendant argues that although claims 7 and 8 call for a sealing ring and the claim language does not limit whether that sealing ring is placed on the upstream side or on the dowstream side of the valve chamber, the prosecution history forces the claims to be interpreted as being limited to a sealing ring on the upstream side of the valve chamber.

Patent claims 7 and 8, set forth in finding 11, define a ball valve comprising a casing, valve chamber having openings, a rotatable ball in the chamber and having a port, and a sealing ring mounted in the chamber around one of the openings, the sealing ring having a lip extending toward the axis of the ring and engaging the ball. Claims 7 and 8 define the lip as free to bend in the axial direction and increasing in thickness outward in the radial direction of the ring, which projects inwardly toward the axis of the sealing ring and sealingly contacts or engages the ball, and which is free to move in the axial direction of the sealing ring. Claim 8 further defines the lip as having one side face disposed toward the ball and one side face away from the ball, which faces diverge from each other substantially uniformly outward in the radial direction of the ring.

The prosecution history of claims 7 and 8 of the patent in suit is discussed in detail in finding 13. Plaintiff urged that claims 7 and 8 distinguished over Saunders' French patent 1,018,974 because the lip on the sealing ring disclosed in Saunders would not seal on the upstream side. It was the patentees' position during the prosecution of the application for patent that if the lip didn't increase in thickness outward in...