Autogiro Company of America v. The United States

*425 CO WEN, Chief Judge

(concurring in part and dissenting in part):

With deference to the majority and with due recognition of the time and study which Judge Durfee and my associates who join with him have devoted to the consideration of this case, I am unable to agree with that portion of the court’s opinion which relates to Cierva Patent No. 1,947,901, referred as to the ’901 patent.

As the trial commissioner pointed out in his opinion, helicopters with power-driven rotary wings and gyroplanes with wind-driven (autorotation) rotary wings are both broadly old and both types are rotary wing aircraft. In resolving the issue, it is important to bear in mind that throughout the history of the prosecution and issuance of the ’901 patent, claims of two different kinds were present in the application for the patent — first, claims which are concerned only with rotary wing aircraft and, second, claims which relate to aircraft containing both rotary wings and fixed aerofoils or wings. The original application (def. ex. 94) filed in 1930 presented more than 30 claims, including 14 claims which did not refer to or include a fixed wing and a number of others which recited a fixed wing as an element of the combination. Moreover, of the 30 claims included in the ’901 patent, 14 do not recite or refer to fixed wings or areofoils. These are Claims 1, 2, 3, 18, 19 and 24 through 32.

The first sentence of the ’901 patent application states that the invention relates to improvements in rotary wing aircraft disclosed in the applicant’s earlier Patent No. 1,590,497. That patent, which was issued in 1926, disclosed a rotary wing aircraft without a fixed wing.

As shown in the trial commissioner’s finding 25, Claim 3 of the ’901 patent involved here, does not define relationships between the rotary wing system and a supplemental fixed wing. Instead, it pertains to a sustaining rotor construction having features of proportioning and disposition of the rotor blades, which are of airfoil section in a swingingly-pivoted arrangement and with the rotor blades having a positive incidence setting. Claim 3, tabulated to show the elements thereof, reads as follows:

In an aircraft,

1. a sustaining rotor construction having blades

(a) mounted for movement with respect to an axis member

(b) and so proportioned that, under the influence of air currents, the blades have an average autorotational speed at the tip substantially in excess of the maximum flight speed of which the craft is capable,

(c) the blades of the rotor being of an aerofoil section of substantially fixed centre of pressure,

(d) and arranged, with respect to the axis member, in such manner as to be free to assume positions of equilibrium between intertia and lift forces at various points in their general path of rotative travel

(e) and said blades being set at a positive incidence calculated with respect to the no-lift position relative to a plane perpendicular to the axis of rotation. [Indentation and numbering added.]

In describing the improvement of the invention covered by the ’901 patent over the earlier ’907 patent, the inventor states:

I have further found that I can best attain these desirable results, at least when employing substantially symmetrical blade sections, with an individual positive-incidence setting of the blades on their common axis, of preferably around 2° or 3°, but more than 5°, as compared with the substantially neutral setting illustrated in my said Patent No. 1,590,497. This is productive of two rather striking results: first, that at rather slow speeds of translational movement of the craft, the rotor operates at a somewhat slower speed of rotation than one with blades set at no-lift or at a slight negative incidence, but with increased lifting efficiency and decreased frictional resistance; and second, at higher *426 speeds of the craft, the rotor tends to run materially faster than its rotational speeds at low speeds of the craft, rather than slower or substantially constant as is respectively the case with rotors, in which the effective blade incidence is negative or neutral; all of which produces an important result, later to be considered.

Reference to the positive incidence setting of the rotor blades is made in six separate paragraphs of the specifications dealing with the purposes and advantages of the ’901 invention.

The decision of the majority is based upon its conclusion that the term “so proportioned” in Claim 3 means a relationship between rotor blades and fixed wings. Since the accused helicopters have no fixed wings, the court holds that Claim 3 has not been infringed. In reaching that result, the majority relies primarily upon three quotations from the specifications. . The first of these refers to a proportioning and disposition of the blades and blade system and the “relation thereof” to the fixed lifting surfaces. I interpret the first portion of the quotation as a reference to a proportioning of the rotor blades themselves in an aircraft without fixed wings for the purpose of achieving the results described in Claim 3. I read the second portion of the quotation as a statement that for other claims including both fixed and rotary wings, there is a relationship between the rotor blades and the fixed wing. There is no statement that the rotor blades are proportioned to the fixed wings.

The second quotation from the specifications in the court’s opinion is no more than an illustrative embodiment of what the inventor conceived to be the best mode of using his invention, i. e., by employing it in an aircraft having both fixed and rotary wings. There is no reference in this second quotation to “proportioning” of the rotor blades.

The third quotation from the specifications appears in footnote 19 of the court’s opinion. Here again is an illustrative embodiment of what the inventor considered the most advantageous use of his invention — a use to which the patent does not confine him. The quotation does not mention proportioning of the rotor blade system. Instead, the specification states that if one uses an aircraft combining both fixed and rotary wings in the particular embodiment of the invention there described, the total area of the fixed wings should be proportioned to the area of rotor blades within a range of 50 percent to 100 percent. When read in connection with the other claims, it is perfectly clear that Claim 3 covers only a sustaining rotor construction. In that context, the claim refers to a proportioning of the rotor blades to achieve the tip speed described. Therefore, I find no basis in the quotation for reading into Claim 3 a limitation that pertains only to a proportioning of the fixed wings to the rotor blades in aircraft where both types of wings are employed.

In my view, the court has utilized certain illustrative embodiments in the patent specifications for the purpose of en-grafting on Claim 3, which does not involve fixed wing aircraft, a limitation which pertains only to fixed wing aircraft. It seems to me that such an interpretation is contrary to the holding of this court in Zonolite Co. v. United States, 149 F.Supp. 953, 958 , 138 Ct.Cl. 114, 123 , wherein the court stated:

Patent specifications and drawings are not to be read so as to limit the scope of the claim recital where the claim recital is clear and unambiguous. While claims should be construed in the light of the specifications and drawings to obtain an understanding thereof, the illustrative embodiments specified are not to be read into the claims. See White v. Dunbar, 1886, 119 U.S. 47, 51-52 , 7 S.Ct. 72 , 30 L.Ed. 303 . The claims alone define what is covered by the patent. See Kuhne Identification Systems, Inc. v. United States, 1936, 82 Ct.Cl. 237, 258 .

The reason for the rule, particularly in cases where an illustrative embodiment that represents the inventor’s conception of the best use of the invention is offered *427 as a defense to infringement, was set forth by the Supreme Court in Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405 , 28 S.Ct. 748 , 52 L.Ed. 1122 (1908):

We think it is clear that the court considered that Liddell sought to comply with § 4888 of the Revised Statutes. In other words, he filed a description of his invention, explained its principle, and the best mode in which he “contemplated applying that principle” and did not intend to give up all other modes of application. An inventor must describe what he conceives to be the best mode, but he is not confined to that. If this were not so most patents would be of little worth. [Footnote omitted]

Id. at 418, 28 S.Ct. at 751 .

It is my conclusion that Claim E of the ’901 patent defines an invention in which the rotor blades are so proportioned in shape, area, and incidence with relation to the weight of the aircraft as to produce a tip speed that gives greater efficiency in the operation of a rotary wing aircraft. That conclusion is based upon a consideration of the file wrapper, a study of the entire ’901 patent, the prior art, and the testimony of expert witnesses — all as reflected in the trial commissioner’s findings of fact.

In determining the meaning of the term “so proportioned,” I would turn first to the application file. Connecticut Valley Enterprises, Inc. v. United States, 348 F.2d 949 , 172 Ct.Cl. 468, 475 (1965); Mastini v. American Telephone & Telegraph Co., 236 F.Supp. 310, 314 (S.D.N.Y.1964).

The term “so proportioned” was used in several of the original claims in the ’901 patent. For example, original Claim 22 referred to a proportioning of the rotor blades so that under the influence of air currents, the blades would have a rotational speed as described. No reference was made to fixed wings. Claim 22 was amended to state that the blades were “so proportioned with respect to the weight of the craft.” (def. ex. 49, p. 24). In seeking the allowance of Claim 22, the applicant argued (def. ex. 49, p. 122) that “the claim as amended brings out the proportioning of the blades with respect to the weight of the craft in such manner that even with a positive-lift incidence setting the tip speed will have the relationship set forth in the claim.” Thus, it is clear that the term “so proportioned” has been in the ’901 patent disclosure since the application was filed in 1930. Since the definition given by the applicant was not questioned by the Patent Office, it seems to me that the inventor’s interpretation should be controlling. It should also be noted that in the application, Claims 1-4 (def. ex. 49, pp. 16-17), Claims 18-20 (def. ex. 49, pp. 23-24), and Claim 30 (def. ex. 49, pp. 28-29) included no references to fixed wing aircraft.

It is proper to look at other claims in the patent to determine the interpretation of a particular claim involved in a case. United States v. Adams, 383 U.S. 39, 49 , 86 S.Ct. 708 , 15 L.Ed.2d 572 (1966). In reaching its interpretation, the majority has compared Claim 3 with Claims 4-7 and 8-17, all of which refer to a fixed wing or fixed aerofoil. However, I would contrast Claim 3 with Claim 4 and compare Claim 3 with Claim 18. Claim 4, which relates to aircraft having both rotary and fixed wings, reads as follows:

4. In an aircraft, a sustaining rotor construction having blades mounted for movement with respect to an axis member and so proportioned that, under the influence of air currents, the blades have an average rotational speed at the tip substantially in excess of the translational flight speed of which the craft is capable, the blades of the rotor being arranged, with respect to the axis member, in such manner as to be free to assume positions of equilibrium between inertia and lift forces at various points in their general path of rotative travel, together with a substantially fixed aerofoil of an effective area approximately 50% to 100% of the area of the rotative blades. [Emphasis supplied.]

*428 It is noteworthy that the first portion of Claim 4, like Claim 3, refers to a proportioning of the rotor blades to attain the tip speed described. By contrast, the last clause in Claim 4, which includes a fixed wing, recites a specific percentage of the area of the fixed wing to the area of the rotative blades.

Claim 18, which covers rotary wing aircraft, states in part as follows:

* * *; said wings having in flight, when at an intermediate position of pivotation, an average autorotational incidence which is at positive-lift with relation to a plane perpendicular to the axis of rotation; the elongated form, the area and the average incidence of said rotative wings being so proportioned with relation to the weight of the craft that with the full burden of sustention falling upon said rotor the wings thereof have an average rotational speed at the tip greater than the top forward speed of which the craft is capable under the influence of said forward proplusion means. [Emphasis supplied.]

Since Claim 3 recites no fixed wing, I would utilize the underlined statement in Claim 18 for determining the proper interpretation of the term “so proportioned” as it is used in Claim 3.

The defendant contends that the trial commissioner’s ultimate findings of fact and recommended conclusions of law are based entirely upon the language of Claim 3 without regard to other pertinent evidence. A mere reading of the findings demonstrates the complete inaccuracy of that contention and shows that the findings on validity and infringement resulted from a two-step process:

First, a determination of the meaning of Claim 3 from a consideration of all the relevant evidence, including the patent, the application file, the prior art, and the testimony of many witnesses.

Second, a determination that the accused helicopters do substantially the same work in substantially the same way and accomplish the same result as the invention recited in Claim 3.

In its relatively few exceptions that comply with the rules of this court, defendant has relied upon certain parts of the patent specifications to support its argument that Claim 3 is concerned exclusively with rotary wing aircraft having supplemental fixed wings. In my judgment, the trial commissioner’s findings 11-23, 362, 364, 366, 368, 380 and 381 effectively dispose of the fixed wing defense. His findings 24-45, inclusive, deal with the features of the invention disclosed in Claim 3, and are based upon the specifications, the drawings, the file wrapper, and the testimony of the witnesses. Such findings, both evidentiary and ultimate, sustain a conclusion that the subject matter of Claim 3 is not limited to fixed wing aircraft. In his findings 48 to 56, inclusive, 57 to 65, inclusive, and 66 to 74, inclusive, the trial commissioner has shown in clear detail how the accused helicopters incorporate the combination of elements defined in Claim 3 of the ’901 patent, operate in the same manner, and produce the same result. Since each of the findings enumerated above is well supported by the record, I would adopt them as separate findings of fact and as the basis for a conclusion of law.

Under our rules and especially in a case like this where a vast amount of evidence is offered by both parties and where there is conflicting testimony of expert witnesses, the trial commissioner’s findings are presumed to be correct. In my opinion, the defendant has not made the strong affirmative showing that would justify the rejection of such findings. Davis v. United States, 164 Ct.Cl. 612, 616-617 (1964); Dodge Street Building Corp. v. United States, 341 F.2d 641, 644 , 169 Ct.Cl. 496, 501 (1965). It seems to me that a careful adherence to our rule is called for in this case. The record is one of the most voluminous that has ever been presented in litigation in this court. The determination of the many factual issues requires not only a balancing of the credibility of the witnesses and an assessment of the weight to be. accorded to the documentary evi *429 dence but a knowledge and understanding of the scientific principles so extensively involved in this action. In view of the training and experience of the trial commissioner in such matters, I would not disturb his findings of fact with respect to the ’901 patent on the basis of what I regard as an inadequate showing to the contrary.

For the reasons stated above, I would hold that Claim 3 of the ’901 patent is valid and has been infringed. As to the other patents involved in this action, I concur in the court’s decision.

COLLINS, Judge, joins in the foregoing opinion, concurring in part and dissenting in part..