Piet v. United States

• Decision Date: 08 September 1959
• Docket Number: No. 322-58.,322-58.
• Citation: 176 F. Supp. 576
• Parties: Meyer PIET, an individual, and Future-craft Corporation, a corporation, Plaintiffs, v. UNITED STATES of America, Defendant.
• Court: U.S. District Court — Southern District of California

176 F. Supp. 576

Meyer PIET, an individual, and Future-craft Corporation, a corporation, Plaintiffs, v. UNITED STATES of America, Defendant.

No. 322-58.

United States District Court S. D. California, Central Division.

September 8, 1959.

COPYRIGHT MATERIAL OMITTED

Gibson, Dunn & Crutcher, by Dean C. Dunlavey and Julian O. von Kalinowski, Los Angeles, Cal., for plaintiffs.

Laughlin E. Waters, U. S. Atty., by Richard A. Lavine, Asst. U. S. Atty., Los Angeles, Cal., and Albert K. Geer, Dept. of Justice, Washington, D. C., for defendant.

YANKWICH, District Judge.

Meyer Piet, to be referred to as Piet, and Futurecraft Corporation, a California corporation, to be referred to as Futurecraft, instituted this action against the United States on April 11, 1958, to recover compensation for use of an alleged invention represented by Letters Patent No. 419,471, entitled "System and Valve Mechanism for Rocket Propulsion". The application for the patent was filed on March 29, 1954. On the same day an assignment of the entire rights, title and interest in the application and the invention, as well as any letters to be granted, was made to Futurecraft. During the course of the examination of the patent in the United States Patent Office, on October 13, 1954, a secrecy order was imposed on the application and the invention by the Commissioner of Patents, acting in accordance with notification of the United States Army. The secrecy order was accompanied by a permit designating a limited number of persons in the Army and others to have access to the information contained in the application.

On June 21, 1956, the Patent Office notified the plaintiffs that the application containing twenty-six claims was in condition for allowance. However, the Patent Office withheld formal issue "during such period as the national interest requires" because of the secrecy order imposed on October 13, 1954. By this action plaintiffs seek to recover compensation for use by the Government of the invention and damages caused by the secrecy order.¹ Many proceedings have been had in the case. A motion to abate the action because of a claim of secrecy by the Secretary of the Army was denied.² Other proceedings, such as motions for summary judgment,³ which were denied need not concern us because the Court ordered, on June 24, 1959, a separate trial⁴ of the defense of invalidity of the patent in suit by reason of public use and sales for more than one year before the filing date of the application.⁵

This defense is available⁶ to the Government under the express provision of the Statute under which this action is brought.⁷ A separate trial was had on August 24, 1959. Before us is the determination of the fact whether the defense is made out. If it is, there is no issue to be tried, for, in such circumstances, even a summary judgment would be proper,⁸ as the question of validity becomes one of law.⁹ Counsel have stipulated in writing to the facts upon which the contention of the Government is based. In what follows we give a summary of the series of stipulations.

I Agreed Facts

Claims numbered 3-13, 16-28 and 32-33 of the plaintiffs application Serial No. 419,471 have been allowed by the Patent Office. Each of the claims so allowed reads on one or more of the valves depicted in certain Futurecraft drawings designated as 9-1340, 10003 and 10005. One or more of the claims allowed in the application also reads on the valve depicted in California Institute of Technology, Jet Propulsion Laboratory, drawing number 5-9908, which plaintiffs contend is plaintiffs' sole property.

The drawings and valves referred to are the only drawings and valves relied upon by the defendant in support of its defense that a valid patent cannot issue on plaintiffs' application number 419-471. Each of the valves depicted in Futurecraft drawings 9-1340, 10003, 10005 and JPL drawing 5-9908 was manufactured and sold by plaintiffs, for profit, not earlier than 1950 but prior to March 29, 1953, but only under the following circumstances:

All sales of the valves were solely to the United States Government, through prime contractors, in connection with work being done by the prime contractors on military defense projects under Government security classification. In particular, the following valves were sold to the Government by plaintiffs through the following prime contractors and were used solely for incorporation into the propulsion systems of the following military missiles or rockets, all of which were security classified as "Confidential" or higher at all times prior to March 29, 1954:

                  5-9908      Jet Propulsion              Corporal missile
                                Laboratory
                  9-1340      Firestone                   Corporal missile
                  10003       North American              Cook research sled
                                Aviation
                  10005       Aerojet-General Corp.       Bomarc missile
                

The invention described and claimed in the plaintiffs' patent application 419,471 has never been available for sale or on sale except to the Government through the aforesaid prime contractors for use in the aforesaid classified military rockets and missiles.

The JPL drawing 5-9908 was classified "Restricted" at all times prior to October 16, 1954, and to the present knowledge of the parties only personnel working on the Corporal missile program and having a Government security classification of "Confidential" or higher had access to or saw said drawing or the valve depicted therein prior to said date.

The Futurecraft drawings were not officially classified but were treated by plaintiffs, at all times, as though classified and bore the Futurecraft proprietary notices set forth thereon, and, to the present knowledge of the parties, no one anywhere had access to or saw the Futurecraft drawings or the valves depicted therein prior to March 29, 1954, except persons working on the Corporal missile program or the Cook research sled program or the Bomarc missile program and having a Government security classification of "Confidential" or higher.

The Corporal missile, the Cook research sled and the Bomarc missile were classified "Confidential" or higher until a date not earlier than March 29, 1954.

Plaintiffs' patent application, when filed, was duly classified "Confidential" by the Pasadena Office of the Los Angeles Ordnance District. Plaintiffs' patent application and the invention described in it and all material information with respect thereto were classified "secret" by the Department of Commerce on October 13, 1954, upon advice of the Armed Service Patent Advisory Board. Declassification of the plaintiffs' patent application and the invention described in it was considered by the Armed Services Patent Advisory Board on June 12, 1958, and the considered judgment of the Board was that the military security classification of "secret" could not then be rescinded or modified. On July 11, 1958, the defendant filed in this action a Claim of Privilege by the Secretary of the Army, Wilber M. Brucker, stating that the Secretary had

"personally considered the technical matters presented by the plaintiffs' claim"

and had

"determined that the plaintiffs' patent application and documents, statements, and testimony which relate, or may relate, to the technical subject matter thereof * * * are military and Army secrets classified as such."

Plaintiffs' patent application and the invention described in it were declassified for the first time on or about April 22, 1959.

The official character of the Manual of Patent Examining Procedure has also been stipulated to. The text of Section 707.05(f), material here, is printed in the margin.¹⁰

II Sales

The material portion of the Section under which the defense is based reads:

"A person shall be entitled to a patent unless— * * *

"(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States."¹¹

The application for the patent was filed on March 29, 1954. The stipulation admits sales for profit of three different valve structures to separate buyers for governmental use prior to March 29, 1954. All the allowed claims, which by reason of secrecy will not be disclosed, read on one or more of the valves sold. So one of the questions before the court is whether there was a "sale" within the meaning of the Section.

Provisions similar to the one now discussed invalidating patents, if the patented device had been on sale beyond a certain period, have been in prior patent statutes. And the courts have held repeatedly that a single sale is sufficient to invalidate the patent when granted.¹² The rule and the exceptions to it were well stated in one of the cases just cited:

"A single sale to another of such a machine as that shown to have been in use by the complainant more than two years prior to the date of his application would certainly have defeated his right to a patent; and yet, during that period in which its use by another would have defeated its right, he himself used it, for the same purpose for which it would have been used by a purchaser.

Why should the similar use by himself not be counted as strongly against his rights as the use by another to whom he had sold it, unless his use was substantially with the motive and for the purpose, by further experiment, of completing the successful operation of his invention?

"On the other hand, the use of an invention by the inventor himself, or by another person under his direction, by way of experiment, and in order to bring the invention to perfection, has never been regarded in this court as such a public use as under the statute defeats his right to a patent."¹³

The manufacture of a single machine upon an oral order by the inventor followed by delivery is sufficient.¹⁴

If we apply these principles to the stipulated facts the legal conclusion is warranted...