# Gould Inc. v. United States > United States Court of Claims · May 17, 1978 · 579 F.2d 571 URL: https://www.frixlaw.com/law-library/cases/8596287 ## Case - **Full name:** GOULD INC. v. United States - **Court:** United States Court of Claims - **Decided:** May 17, 1978 - **Citations:** 579 F.2d 571; 217 Ct. Cl. 167; 198 U.S.P.Q. (BNA) 156; 1978 U.S. Ct. Cl. LEXIS 138 - **Precedential status:** Published - **Opinion:** Dissent by Nichols - **Judges:** Colaianni, Davis, Kashiwa, Nichols, Trial - **Cited by:** 39 later opinions in the Frix Law Library ## Citator (automated) - No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases. - Full citator and citing cases: https://www.frixlaw.com/law-library/cases/8596287 ## How later opinions describe it (automated extraction) - holding experimental use exception did not apply where "the work done was not directed toward the invention covered by the claims in suit, the overall engine configuration, but was directed toward scaling-up [increasing the output horsepower of] the engine and checking and adj… - holding experimental use exception did not apply where Athe work done was not directed toward the invention covered by the claims in suit, the overall engine configuration, but was directed toward scaling-up [increasing the output horsepower of] the engine and checking and adj… - stating that experimental use includes “tests needed to convince [the inventor] that the invention is capable of performing its intended purpose in its intended environment” ## Opinion text Nichols, Judge, dissenting: Respectfully, I dissent. The question that divides the panel and me is whether certain sales and offers for sale of the patented invention, more than one year before the application, invalidate the patent or are excused by the experimental use doctrine. In that regard, I note that the panel is deleting a sentence in the trial judge’s recommended opinion which reads - Plaintiffs arguments that a reduction to practice can occur before an experimental use period has been completed is unpersuasive and contrary to logic and the law. I agree with this deletion. I think it is fairly clear or at least arguable, from Judge Thornberry’s recent able and exhaustive treatment of the experimental use exemption, that public use or sale more than one year prior to the patent application will be excused, even after the invention could be deemed reduced to practice in the "legal sense,” if experimentation is still going on that is reasonably necessary "to determine whether further refinement is needed.” In re Yam Processing Patent Validity Litigation, 498 F.2d 271, 285 (5th Cir.), cert. denied, 419 U.S. 1057 (1974). This seems to me to stand to reason. Experimenta *193 tion adequate to test for utility or to complete the invention itself may well necessarily precede reduction to practice "in the legal sense,” but experiments of broader purpose can occur later. The purpose of the experimental use exception is to avoid rushing the inventor to the Patent Office when the invention still needs further experiment, with the result that he will be cheated out of part of the period of monopoly exploitation allowed him by law, and, also, I should think, the waste of Patent Office resources in processing halfbaked inventions should be considered. These purposes are frustrated if the need for further experimentation of any kind stands in the way of prompt exploitation yet does not toll the running of the one year period for filing. There might be instances of a linkage in a buyer’s mind, that led him to delay exploitation to await the result of experiments having nothing to do with the invention at issue. Thus an automobile manufacturer might delay incorporating a newly invented carburetor in a new model car, pending experiments with a new steering gear scheduled for the same model. That is not this case, and need not detain us. Here the experiments were with the very same "barrel engine” that is the subject of the patent, whose invalidity is asserted. The connection of experiments with the invention must be evaluated in light of the surrounding circumstances. Here we have a new propelling mechanism for torpedoes, weapons of naval warfare. If there is any possible customer except the U. S. Government, the existence of such other is not suggested by the findings. The U. S. Government, though impressed with the invention, was unwilling to accept it for operational use without a solid propellant, whereas the inventors had developed it with a liquid propellant. Until these hesitations were resolved, the invention was unmarketable. In the circumstances, in my view, these were necessary experiments. I note that the trial judge quotes from Judge Thornberry a passage from 498 F.2d at 279 and two at 280. The latter two he separates by stars to denote an omission. They are in the original widely separated and without logical connection with one another. At p. 281 Judge Thornberry says flatly: *194 Numerous cases, however, have explicitly extended the experimental period past the point of reduction to practice. He employes the technique of stating apparently conflicting lines of cases and reconciling them to support his own position. A Canadian court had fixed a "date of invention” for the purpose of comparison with prior art. Judge Thornberry holds this lacks collateral estoppel effect in his court because the date of "reduction to practice” under our law comes later on typically, than the Canadian concept of date of invention under their law. Whether "reduction to practice” does or does not end the effect of experimentation as tolling the one year period for filing, was not really necessary to decide the issue before him, because the date of "reduction to practice” was itself fluid and in issue, unlike here. But I read him at p. 285 as finally concluding that experimentation after the date of reduction to practice could still qualify, when it did not operate to postpone the date of reduction to practice itself. The court will say, I suppose, that the experiments here involved do not toll because they related to another invention, not the one sued on. This analysis would distinguish between claims 1, 2, 3, and 5, sued on here, and other claims under the same patent. The latter group embody the results of the experiments here at issue, and are not in litigation, because the experiments were performed under government contracts and therefore defendant enjoys a royalty free license. You can, therefore, if you like, view the experiments as conducted towards the perfection of another invention. If, however, the experiments had been unsuccessful — and, antecedently considered, it is always possible for an experiment to fail — they would have tended to demonstrate that the embodiment claimed on in claims 1, 2, 3, and 5 was the best achievable. If the Navy had then terminated the experiments, and bought the previous embodiment for operational issue to ships and planes, I do not think the panel would hesitate to say the experiments had served to test the original invention, and, therefore, the one year period had been tolled. Is it then true that the result of an experiment determines its legal effect in these premises? I do not think *195 so. I think, whatever their outcome, experiments to determine whether an invention can be improved are the same thing as experiments to determine whether, in Judge Thornberry’s phrase, "further refinement is needed.” In the eyes of a customer such as the U. S. Navy, at least, if an invention can be improved, it must be improved, and in such circumstances "further refinement” is always needed. If Sears and Roebuck had been the customer, we might have a different case. I do not attach much weight to an offer to sell engines according to specifications yet to be established. I view the whole course of transactions with the Navy and with Aerojet as ancillary to the conduct of experiments, which were to evaluate the invention and determine its best embodiment. Not a single torpedo engine embodying the invention was in the pertinent period sold or offered for sale for incorporation in an operational torpedo, for issue to an operational ship or plane. The time for commercial exploitation of the invention had not begun. Those facts to me are decisive. Judge Thornberry’s analysis of the cases reveals a dismaying state of conflict and confusion. We Massachusetts lawyers used to say that some decision of the Supreme Judicial Court of the state could be cited on the wrong side of every issue, and so it is with the Federal cases in this area of Section 102(b). I cannot help seeing, as he does, some instances of almost willful laying of traps for the unwary. It may be we of the judiciary have an unconscious hostility towards the patent system. Our lives would certainly be easier if it did not exist. I know such motives are not at work in the majority decision here, but I cannot help thinking that, without so intending, the trial judge is adding another quagmire (as he calls it) to the many already lurking in this jungle. I would have preferred to clear out underbrush and open up solid land. CONCLUSION OF LAW Upon the findings of fact and the foregoing trial judge’s opinion which are adopted by the court and made a part of the judgment herein, the court concludes as a matter of law *196 that claims 1, 2, 3 and 5 of the Hamlin patent are invalid. Plaintiff is not entitled to recover, and its petition is dismissed. --- Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/8596287. Public record. Not legal advice.