Molinaro v. Watkins-Johnson CEI Division

• Decision Date: 09 April 1973
• Docket Number: Civ. A. No. 72-589.
• Parties: Edward T. MOLINARO and Anthony P. Catanzaro v. WATKINS-JOHNSON CEI DIVISION.
• Court: U.S. District Court — District of Maryland

359 F. Supp. 467

Edward T. MOLINARO and Anthony P. Catanzaro v. WATKINS-JOHNSON CEI DIVISION.

Civ. A. No. 72-589.

United States District Court, D. Maryland.

April 9, 1973.

Edward T. Molinaro, Anthony P. Catanzaro, plaintiffs, in pro. per.

David F. Albright and Semmes, Bowen & Semmes, Baltimore, Md. (Francis D. Thomas, Jr., and Bacon & Thomas, Washington, D. C., Aldo J. Test, and Flehr, Hohbach, Test, Albritton & Herbert, San Francisco, Cal., of counsel), for defendant.

NORTHROP, Chief Judge.

Plaintiffs, Edward T. Molinaro and Anthony P. Catanzaro, are representing themselves in this patent case, and claim that certain devices manufactured by Watkins-Johnson CEI Division—the MD-104 Auto-Scan Receiver and a modification kit for field conversion of any RS-111-1B Series Receiving System into an RS-111-1B-17—infringe Molinaro's Patent No. 2,906,875 for a Station Sampling Radio. Defendant challenges the jurisdiction of this Court and also states in its answer that the patent is invalid and not infringed.

Defendant's brief offers a detailed description of the Molinaro Station Sampling Radio and, to some extent, of the accused structure. With respect to the pending motions, however, there is no need for such a detailed discussion of the devices in question. For the purposes of its motion for summary judgment, however, defendant does assume that when the Autoscan MD-104 is connected to and operated with the CEI Type RS-111-1B-17 receiving system, the resulting combination includes the features and operates as the Molinaro Station Sampling Radio. (For the record, however, defendant was careful to point out that even in combination, there is no infringement.)

On the basis of its answers to plaintiffs' interrogatories and the affidavits of its employee, John S. Wilkins, Manager of Manufacturing of Watkins-Johnson CEI Division, defendant alleges that it manufactured and delivered twenty of the accused devices. Apparently two were sold to foreign governments, one to Israel and another to Switzerland. Eighteen, on the other hand, were delivered to the United States Government, but defendant refuses to indicate which agency received the devices, and claims that this information is classified. Three additional MD-104's were manufactured in anticipation of additional orders by the United States but have not yet been sold.

Another factor which the defendant introduces into the equation is that unless the two components of defendant's system are connected, there is no infringement. With regard to the items not sold to the United States, therefore, defendant claims that it never performed the requisite connection within the United States, for those devices were shipped separately and only assembled in the foreign country.

Defendant moves for a summary judgment on two grounds. First, it contends that 28 U.S.C. § 1498(a) is applicable to the structures sold to the United States Government, and plaintiffs' remedy, if any, lies exclusively in an action in the Court of Claims. Thus the District Court is without jurisdiction. As to the devices sold abroad, defendant cites Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 92 S.Ct. 1700, 32 L.Ed.2d 273 (1972), for the proposition that there is no infringement as a matter of law.

Initially it is necessary to state some fundamental rules applicable to this motion under Fed.R.Civ.P. 56. The purpose of a summary judgment is to prevent the unnecessary trial which would result if there are no genuine issues as to material facts. See 6 J. Moore, Moore's Federal Practice ¶ 56.15 1.-0, at 2281 (2d ed. 1971). It is settled that if there is a real dispute as to material facts, a summary judgment cannot be allowed. Phoenix Sav. and Loan, Inc. v. Aetna Cas. and Sur. Co., 381 F.2d 245 (4th Cir. 1967); Kirkpatrick v. Consolidated Underwriters, 227 F.2d 228 (4th Cir. 1955); Pierce v. Ford Motor Co., 190 F.2d 910 (4th Cir. 1951); Stevens v. Howard D. Johnson Co., 181 F.2d 390 (4th Cir. 1950); Batchelor v. Legg & Co., 52 F.R.D. 545 (D.Md.1971); Hutchens v. Janssen, 41 F.R.D. 287 (W.D.Va.1966). An analysis of this Circuit's decisions on the principles concerning the granting or denial of a summary judgment indicates that a very strict standard must be met before a summary judgment can be granted. Not only must there not be a dispute as to the evidentiary facts, but there cannot be a disagreement as to the inferences or conclusions to be drawn therefrom. Phoenix Sav. and Loan, Inc. v. Aetna Cas. and Sur. Co., supra, 381 F.2d at 249; American Fid. & Cas. Co. v. London & Edinburgh Ins. Co., 354 F.2d 214, 216 (4th Cir. 1965). Further the party opposing the motion is entitled to all the favorable inferences to be drawn from the evidence. Cram v. Sun Ins. Office, Ltd., 375 F.2d 670, 674 (4th Cir. 1967). Lastly, the party which moves for summary judgment has the burden of establishing the absence of any genuine issue as to all the material facts. 6 J. Moore, supra, ¶ 56.15 3, at 2335.

Having set forth the rule as to summary judgment, the Court must now turn to the defendant's first contention. The case law is consistent with defendant's position that when a patented invention is manufactured for the United States, the plaintiffs' sole remedy is against the United States in the Court of Claims. Croll-Reynolds Co. v. Perini-Leavell-Jones-Vinell, 399 F.2d 913 (5th Cir. 1968); Stelma, Inc. v. Bridge Elec. Co., 300 F.2d 761 (3d Cir. 1962); Bereslavsky v. Esso Standard Oil Co., 175 F.2d 148 (4th Cir. 1949), aff'g 82 F.Supp. 939 (D.Md.1949). When considering this issue of sole, ultimate use by the United States on a motion for summary judgment, the law is clear that there must be no real dispute as to the fact of sole, ultimate use. Evans v. McDonnell Aircraft Corp., 395 F.2d 359 (8th Cir. 1968); J. & G. Dev. Co. v. All-Tronics, Inc., 198 F.Supp. 392 (E.D. N.Y.1961).

A further consideration which this Court must face is the troubling aspect of section 1498(a) which seems to indicate that "use or manufacture for the United States" requires "authorization or consent of the government" of the patent infringement. The cases are not clear on exactly what this wording means. Defendant would have this Court believe that mere acceptance of the accused article by the United States shows "authorization and consent," whereas the plaintiffs argue that this fact must be expressly shown. Defendant cites language to support its position in Bereslavsky v. Esso Standard Oil Co., supra, quoting a Bulletin of the Judge Advocate General which appears to give weight to its contention. The Stelma case, also cited by defendant, involved a case where the Government's authorization and consent was implied from the fact that the United States accepted delivery under a contract which contained an "authorization and consent clause." Later cases, however, imply that there must be some showing of "authorization and consent" to fall under section 1498. See Evans v. McDonnell Aircraft Corp., supra, 395 F.2d at 362; Systron-Donner Corp. v. Palomar Scientific Corp., 239 F.Supp. 148, 150 (N.D.Cal.1965); Roberts v. Herbert Cooper Co., 236 F.Supp. 428 (M.D.Pa.1959); Consolidated Vacuum Corp. v. Machine Dynamics, Inc., 230 F.Supp. 70, 72-73 (S.D.Cal.1964). Consent can be implied, but there is authority that this is possible only where the Government contract requirement cannot be met without infringement. Consolidated Vacuum Corp. v. Machine Dynamics, Inc., supra, at 72, interpreting Bereslavsky v. Esso Standard Oil Co., supra.

Despite the apparent ambiguity as to the requirements of "authorization and consent," this Court is bound by the Fourth Circuit's rule on the subject. It is true that the Bereslavsky case dates back to 1949, but this Court has been unable to find a more recent Fourth Circuit decision. In Bereslavsky, the Court stated that to limit the application of § 1498 to "cases where officers of the government intentionally contract for patent infringement would in very large measure defeat its purpose." 175 F.2d at 150. The following language was adopted by the Court as a definition of "authorization or consent."

"`Authorization or consent' on the part of the Government may be given in many ways other than by letter or other direct form of communication. * * * the specifications and the contract may be silent with respect to the use of patented inventions. In such event, if the invention for which claim is made is incorporated in the articles delivered to the United States under the terms of the contract, the acceptance of such articles as complying with the terms of the contract, constitutes `consent' by the Government sufficient to bring the articles within the provisions of the Act of June 25, 1910, as amended, supra, and forms the basis for the transfer of jurisdiction over any claim for compensation therefor from the District Court to the Court of Claims, * * *." 175 F.2d at 151

Later cases have followed Bereslavsky, and have interpreted it to mean that where the article is both manufactured for and used by the government, § 1498 is applicable and plaintiffs' exclusive remedy is in the Court of Claims. John J. McMullen Associates, Inc. v. State Bd. of Higher Educ., 268 F.Supp. 735 (D.Ore. 1967); Drexler v. Koza, 88 F.Supp. 298 (W.D.Pa.1950).

When the defendant's motion for summary judgment was initially argued at a hearing held on November 3, 1972, the defendant relied exclusively on the affidavit of its employee, John S. Wilburn, to establish the fact that eighteen devices were sold to the United States. Plaintiffs challenged this claim with a counter-affidavit to the effect that they conducted a survey of several agencies in an unsuccessful attempt to determine who had purchased the devices, and further they denied that "authorization and consent" had in fact been given by the United States. With the case in such a posture, this Court could only conclude that a conflict as to a material issue of fact definitely...