Motorola, Inc. v. U.S.

• Decision Date: 08 March 1984
• Docket Number: No. 83-834,83-834
• Citation: 729 F.2d 765,221 USPQ 297
• Parties: , 31 Cont.Cas.Fed. (CCH) 72,229 MOTOROLA, INC., Appellant, v. The UNITED STATES, Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 765

729 F.2d 765

221 U.S.P.Q. 297, 31 Cont.Cas.Fed. (CCH) 72,229

MOTOROLA, INC., Appellant, v. The UNITED STATES, Appellee.

Appeal No. 83-834.

United States Court of Appeals Federal Circuit.

March 8, 1984.

Eugene A. Parsons, Phoenix, Ariz., argued, for appellant.

John Fargo, Washington, D.C., argued, for appellee. With him on the brief were J. Paul McGrath, Asst. Atty. Gen., and Vito J. DiPietro, Washington, D.C., Director.

Before KASHIWA, MILLER, and SMITH, Circuit Judges.

KASHIWA, Circuit Judge.

This is an appeal from a judgment of the United States Claims Court, 1 Cl.Ct. 131 (No. 38-79), entered February 4, 1983. The judgment is on the accounting phase of a similarly-captioned case (Motorola, Inc. v. United States, 229 Ct.Cl. 482 (1981), affirming and adopting Motorola, Inc. v. United States, 209 USPQ 769 (Ct.Cl.Tr.Div.1980)) that decided appellee's liability. In a published opinion, 1 Cl.Ct. 131, the Claims Court, in granting appellee's motion for summary judgment, held that 35 U.S.C. Sec. 287 is incorporated within 28 U.S.C. Sec. 1498 and thereby bars appellant's recovery from the United States. We reverse and remand.

Prior Decision

Appellee, the United States, through its agent, the U.S. Marine Corps, infringed claims 1, 5, and 15 of appellant's U.S. Patent No. 3,383,680 issued to appellant's assignor, Liscum Diven (the "Diven" or " '680" patent). The claimed invention relates to an improved radar transponder (radar beacon) that is capable of communicating with a plurality of radar transmitters such that the operators of the transmitters are able to locate, identify, and distinguish the carrier of the transponder. The carrier may be aircraft, vessels, vehicles, or humans. The Court of Claims held that the claims at issue were valid and that the Marine Corps' AN/PPN-18 transponders infringed claims 1, 5, and 15. The appellant, therefore, is entitled to recover reasonable and entire compensation from the appellee pursuant to 28 U.S.C. Sec. 1498.

Background

The appellant, Motorola, manufactured and sold to the Marine Corps 30 units of the patented radar beacons in early 1969. These units were commercial models of the patented beacons and designated as SST-122KU. None of the 30 units were marked with notice of Motorola's patent rights.

Later in 1969, the Marine Corps decided to procure 112 additional radar beacons and a request for proposals was published, seeking offers to supply such beacons. In its 22-page response to the request for proposals and under the heading, Performance, Motorola stated:

3.5 PERFORMANCE (3.6)

3.5.1 Electrical Characteristics (3.6.1)

3.5.1.1 Transponder (3.6.1.3)

3.5.1.1.1 Response (3.6.1.3.1)--The transponder will provide the commutated apparent double or triple pulse replies shown in Table I, as determined by the setting of the code control switch (see 3.2.1.1 above). The proposed coding technique allows the use of only one modulator, and provides airborne moving target indication with six identification codes.

The commutating modulator that will provide the coding shown in Table I is a Motorola patented approach (United States Patent # 3,383,680 dated May 14, 1969, Liscum Diven, assignor to Motorola, Inc.) that will be supplied to the Marine Corps at no added cost. This approach allows a single modulator to be used as is specified in the HQPD 69-3 requirement paragraph 3.6.1.3.2. This patented modulator approach was used in the SST-133KU radar transponder and has demonstrated an outstanding capability for airborne moving target indication during actual field applications.

The contract was awarded to another manufacturer, Vega Precision Laboratories, Inc. ("Vega"). Between late 1969 and 1970, Vega delivered all 112 radar beacons, designated AN/PPN-18.

In December, 1975, the Marine Corps tendered a second request for proposals seeking additional AN/PPN-18 radar beacons. In its letter dated February 25, 1976, Motorola asserted that the AN/PPN-18 radar beacons described in the December, 1975 request infringed its Diven patent. Motorola filed a formal administrative claim of patent infringement with the Department of the Navy on April 20, 1976. Through an undated letter, received by Motorola on January 3, 1979, the Navy denied Motorola's claim of infringement. Motorola filed suit in the Court of Claims on January 31, 1979.

Claims Court Proceeding

In granting appellee's motion for summary judgment, the Claims Court held that 35 U.S.C. Sec. 287 ¹ is incorporated into 28 U.S.C Sec. 1498. ² In addition, it held that Motorola's alleged notice of infringement, in its response to the 1969 request for proposals, failed to specifically notify the appellee of the prospective infringement, thereby barring the appellant from any recovery.

OPINION

This is a 28 U.S.C. Sec. 1498 action, and as such, the patent owner is seeking to recover just compensation for the Government's unauthorized taking and use of his invention. The theoretical basis for his recovery is the doctrine of eminent domain. Crozier v. Fried Krupp Aktiengesellschaft, 224 U.S. 290, 32 S.Ct. 488, 56 L.Ed. 771 (1912); Irving Air Chute Co. v. United States, 93 F.Supp. 633, 635, 87 USPQ 246, 248 (Ct.Cl.1950). In this context, the United States is not in the position of an ordinary infringer, United States v. Berdan Fire-Arms Manufacturing Co., 156 U.S. 552, 565-66, 15 S.Ct. 420, 423-24, 39 L.Ed. 530 (1895); Carter-Wallace, Inc. v. United States, 449 F.2d 1374, 1390, 171 USPQ 359, 370 (Ct.Cl.1971) (Nichols, J., concurring), but rather a compulsory, nonexclusive licensee. Crozier, supra; Irving Air Chute, supra.

As occurs frequently in section 1498 patent actions, the parties in the instant appeal are presenting and arguing the case as if it were an action brought under Title 35. Although concepts, phrases and words commonly used in the patent field may connote or denote a panoply of rights and remedies under Title 35, the same concepts, phrases and words do not and cannot always connote or denote the same meaning under section 1498. Although a section 1498 action may be similar to a Title 35 action, it is nonetheless only parallel and not identical. Calhoun v. United States, 453 F.2d 1385, 1391, 172 USPQ 438, 443 (Ct.Cl.1972). ³

35 U.S.C. Sec. 287 advises a patent owner to mark his patented article with a notice of his patent rights. Failure to do so limits his recovery of damages to the period after the infringer receives notice of the infringement. Wine Railway Appliance Co. v. Enterprise Railway Equipment Co., 297 U.S. 387, 395-97, 56 S.Ct. 528, 530-31, 80 L.Ed. 736 (1936); Olsson v. United States, 72 Ct.Cl. 72, 103-5, 9 USPQ 111 and 11 USPQ 13, 13-14 (1931). The appellee argues and the lower court held that 28 U.S.C. Sec. 1498 incorporates section 287 as a defense for the Government. The lower court stated:

The Revisor's Notes appended to Sec. 1498 stated that "[i]n absence of a statutory restriction, any defense available to a private party is equally available to the United States." * * * [S]ince section 287 is a limitation on the recovery of damages for patent infringement and thus, similar in effect to a defense, incorporating section 287 into 28 U.S.C. Sec. 1498 appears to be within the spirit of the Revisor's Notes. [Emphasis in original.]

In addition, the appellee argues that at the time section 4900 of the Revised Statutes, ⁴ the predecessor of section 287, was enacted in 1910, failure to mark was treated as a defense. It cites United States Printing Co. v. American Playing-Card Co., 70 F. 50, 53-54 (C.C.W.D.Mich.1895); Sessions v. Romadka, 21 F. 124, 133 (C.C.E.D.Wis.1884), rev'd in part on other grounds, 145 U.S. 29, 12 S.Ct. 799, 36 L.Ed. 609 (1892) for this proposition. We disagree.

I

The lower court based its holding on its interpretation of the Reviser's Note to section 1498. The Reviser's Note, in pertinent part, states:

Based on section 68 of Title 35 U.S.C., 1940 ed., Patents (June 25, 1910, c. 423, 36 Stat. 851 * * * ).

Provisions contained in the second proviso of said section 68, relating to right of the United States to any general or special defense available to defendants in patent infringement suits, were omitted as unnecessary. In the absence of statutory restriction, any defense available to a private party is equally available to the United States.

Changes in phraseology were made.

28 U.S.C.A. Sec. 1498, p. 467 (1973).

This reference to the availability of general and special defenses for the Government was in the texts of predecessor statutes of section 1498. The original statute, enacted on June 25, 1910, ch. 423, 36 Stat. 851 (the "1910 statute" or "1910 Act"), includes the following proviso: ⁵

Provided further, That in any such suit the United States may avail itself of any and all defenses, general or special, which might be pleaded by a defendant in an action for infringement, as set forth in Title Sixty of the Revised Statutes, or otherwise: [Emphasis in original.]

Appellee contends that this proviso is an indication that the marking and notice statute (section 4900), allegedly a defense at the time the 1910 statute was enacted, was incorporated into the 1910 statute. We disagree.

Contrary to appellee's contention and lower court's interpretation, we construe section 1498 as not incorporating section 287. Since an interpretation of section 1498 requires an analysis of the 1910 Act and the predecessor of section 287, we shall first examine whether section 4900 was one of the defenses contemplated in the 1910 Act. Section 4900, the marking and notice statute in 1910, on its face contradicts the appellee's contention. Hamilton v. Rathbone, 175 U.S. 414, 419, 20 S.Ct. 155, 157, 44 L.Ed. 219 (1899). It was not a statutory defense to an action for infringement; it was a limitation on damages. Section 4900 was clearly a limitation on damages since it stated that "no damages shall be recovered by the plaintiff * * *." (Emphasis added.) Dunlap v. Schofield, 152...