Ushakoff v. United States

• Decision Date: 24 January 1964
• Docket Number: No. 2-58.,2-58.
• Parties: Alexis E. USHAKOFF and Stanley A. Baron v. The UNITED STATES.
• Court: U.S. Claims Court

140 USPQ 341, 327 F.2d 669 (1964)

Alexis E. USHAKOFF and Stanley A. Baron v. The UNITED STATES.

No. 2-58.

United States Court of Claims.

January 24, 1964.

L. William Bertelsen, Boston, Mass., for plaintiff. William H. K. Donaldson, Salem, Mass., and Kenway, Jenney & Hildreth, Boston, Mass., were on the brief.

Louise O'Neil, St. Paul, Minn., with whom was Asst. Atty. Gen. John W. Douglas, for defendant.

Before JONES, Chief Judge, and WHITAKER, LARAMORE, DURFEE and DAVIS, Judges.

PER CURIAM.

This case was referred pursuant to Rule 45 to Donald E. Lane, a trial commissioner of this court, with directions to make findings of fact and recommendations for conclusions of law. The commissioner has done so in a report filed December 6, 1962. Briefs were filed by the parties, exceptions to the commissioner's findings of fact and recommended conclusion of law were filed by the defendant, and the case was submitted to the court on oral argument of counsel. Since the court is in agreement with the findings and recommendation of the trial commissioner, as hereinafter set forth, it hereby adopts the same as the basis for its judgment in this case. The court, therefore, concludes as a matter of law that patent No. 2,455,835 is valid; that the plaintiffs are the lawful owners of said patent; that the invention covered by said patent was used by defendant without authorization of the patent owners, and that plaintiffs are entitled to recover reasonable and entire compensation for such unauthorized use within six years prior to the filing of the petition, and judgment is entered to that effect. The extent of liability will be determined in further proceedings pursuant to Rule 38(c).

OPINION OF COMMISSIONER

This is a patent suit under the provisions of Title 28 U.S.C. § 1498, in which plaintiffs seek to recover reasonable and entire compensation for the unlicensed use of a patented invention. Plaintiffs are the record owners of United States Letters Patent No. 2,455,835 naming Alexis E. Ushakoff as inventor. This patent was issued to plaintiffs on December 7, 1948, and will be hereafter identified as the patent. Plaintiffs contend that the claims of the patent have been infringed by the defendant's use of inflatable solar stills. Defendant contends that the patent is invalid and that it has not been infringed, since defendant asserts that it has a license to use the invention. The parties agreed to a separation of issues for trial and that the issues of infringement and validity would be determined first, and that the accounting issue would be determined at a later date.

The Ushakoff patent relates to a solar still which utilizes the sun's energy to convert salt water to drinking water. The solar still, which is designed for emergency use on life rafts, is inflatable so that it will occupy a minimum of space when not in use. The operation of the solar still is based on the principle that when salt water is evaporated, the salt remains as a deposit and the vapor is free of salt. The sun's energy is used to evaporate the salt water and the vapor is then condensed and removed from the solar still. This condensed vapor is free of salt and is safe for drinking.

The need for a means of providing drinking water on the open seas became apparent early in World War II when reports of the agonies faced by men cast adrift at sea were made known. During 1942 plaintiff Alexis E. Ushakoff, hereafter referred to as Ushakoff, became aware of the problem and began experiments to investigate the possibility of using solar distillation of sea water to provide drinking water. A short time later Ushakoff entered the employ of Higgins Industries as Director of Research and was charged with the responsibilities of developing a research department and working on projects then being developed at Higgins Industries. In negotiating his employment, Ushakoff informed Andrew J. Higgins, the head of Higgins Industries and hereafter referred to as Higgins, that he was working on several projects of his own, including specifically the solar still, and that as one condition of his employment it must be agreed that he would receive some share of the profits on these inventions. The condition was apparently accepted. The employment agreement was never reduced to a written contract.

After his employment by Higgins Industries, Ushakoff continued the development of the solar still along with his regular duties and he utilized Higgins Industries personnel and equipment. As the development of the solar still progressed, numerous experimental models were constructed and tested. Frequently the models were submitted to the Air Corps, which was actively attempting to find an effective solar still. The Air Corps ran various tests and experiments on the solar stills in an attempt to determine if they were effective, and then reported the deficiencies to Ushakoff at Higgins Industries. As the development of Ushakoff's solar still proved more promising, the Air Corps encouraged Higgins Industries to continue working on it and entered a purchase order in September, 1944, for 15 solar stills to enable Higgins Industries to obtain a priority for the purchase of plastic film which was in short supply and was slowing down the development. After the priority was received, development proceeded at a much faster rate. While the contract called for 15 solar stills, some 36 were actually sent. These solar stills were delivered a few at a time, and, as the Air Corps comments were received, the solar stills were modified so that actually very few of the solar stills sent to the Air Corps under the contract were identical to any of the others. Even the last of the solar stills which were delivered to the Air Corps on February 5, 1945, incorporated improvements over those delivered in the preceding shipment. All of the solar stills delivered to the Air Corps up to February 5, 1945 were for tests and experiments of various sorts.

Early in 1945 Ushakoff further pressed Higgins for a written contract covering their agreement with respect to the inventions. A draft agreement was prepared by Ushakoff which Higgins refused to accept. Later, Higgins presented Ushakoff with a memorandum agreement which Ushakoff refused. Both proposed agreements called for the payment of royalties to Ushakoff, and neither of them called for an assignment of Ushakoff's patent rights to Higgins Industries. The relationship between Ushakoff and Higgins deteriorated rapidly and finally Ushakoff's employment was terminated on April 3, 1945.

Shortly thereafter both Ushakoff and Higgins filed patent applications on an early version of the solar still, and the Patent Office declared an interference between the two applications. During the interference proceedings Higgins abandoned the invention, and subsequently a patent covering this early version was issued to plaintiffs. Also, during the period immediately following the termination of his employment Ushakoff made several trips to Wright Field to help the Air Corps write procurement specifications on the solar stills and to attempt to get the contract for a company which he was setting up. However, a production contract was awarded shortly thereafter to Higgins Industries for 172,678 distillation kits. This contract was canceled by the Air Corps shortly after the end of the war, before Higgins Industries was able to make delivery.

The application for the patent here in suit was filed on February 4, 1946, and Ushakoff assigned 35 percent to plaintiff Stanley A. Baron for the benefit of Frederick A. Middleton, John J. Finnorn, and said Stanley A. Baron. Finnorn subsequently assigned his interest to Middleton and Baron.

The parties have stipulated that the defendant has procured at least one solar still, of the construction illustrated and described in the patent here in suit, within the period of 6 years prior to the filing of the plaintiffs' petition.

The defendant alleges that the sale and delivery of solar stills to the Air Corps by Higgins Industries pursuant to the purchase order of September, 1944, constitutes a statutory bar to the grant of a valid patent under the provisions of Title 35 U.S.C. § 102(b), since at least some of the solar stills were delivered by January 18, 1945, which was more than 1 year prior to the filing date of the application for the patent in suit, February 4, 1946. It is not believed that this defense has been successfully made out. A use or sale for experimental purposes is an exception to the statutory bar incurred by the use or sale of an invention prior to 1 year before the filing of a patent application. The purpose of the 1-year statutory bar is to prevent an inventor from obtaining profits on his invention for a number of years and then at a later date obtaining a patent. On the other hand, the law has recognized the necessity of allowing an inventor to freely experiment with his invention and permits such experimental use which is reasonably necessary to the perfection of the invention. Elizabeth v. Pavement Co., 97 U.S. 126, 24 L.Ed. 1000 (1878). This exception has been recognized even in cases where the experimental use has resulted in incidental profit to the inventor. As stated in Smith & Griggs Mfg. Co. v. Sprague, 123 U.S. 249, 256, 8 S.Ct. 122, 125-126, 31 L.Ed. 141 (1887):

"A use by the inventor, for the purpose of testing the machine, in order by experiment to devise additional means for perfecting the success of its operation, is admissible; and where, as incident to such use, the product of its operation is disposed of by sale, such profit from its use does not change its character; but where the use is mainly for the purposes of trade and profit, and the experiment is merely incidental to that, the principal and not the incident must give character to the use. The thing implied as excepted out of the prohibition of the statute is a use which may be properly characterized as substantially for purposes

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