Hughes Aircraft Company v. The United States

DAVIS, Circuit Judge,

concurring in part and dissenting in part.

I join the court’s opinion except for the discussion of, and decision on, infringement by the S/E spacecraft through the doctrine of equivalents. On the latter issue, on which I dissent, I agree with Judge Colaian-ni that the S/E satellites do not infringe the Williams patent. I would therefore affirm all of his decision.

My difference with the majority is that I would hold the doctrine of equivalents inapplicable to the S/E spacecraft involved here because, to find equivalence as the majority does, that doctrine has to be stretched far too broadly for the Williams patent.

1. The status and history of the patent is very important. I agree with the majority that Williams is not a pioneer patent; accordingly, it is not entitled to the broad range of equivalents allowable for pioneer inventions. In addition, the prosecution history shows that, after the citation of McLean, the Williams inventors cancelled several of their original, broad claims and substituted new claims (now claims 1-3) containing new limiting elements directly relevant to the charge of infringement by the S/E satellites: (1) means for providing an indication of ISA to an external location; and (2) means for applying fluid to fluid expulsion means within a fixed time period after the receipt of a control signal from the external location. The accused S/E spacecraft do not contain those elements which were expressly included to overcome prior art. 1 As the majority says, these new claims show that Williams did not submit claims broadly covering all ground controllable spacecraft. An infringing article must embody the two elements I have mentioned, either literally or through an appropriate equivalent. Those elements show the invention which was patented in this Williams patent.

*1367 2. In the light of Williams’ non-pioneer status and of this prosecution history I cannot accede to the majority’s entire dispensation (with respect to three of the S/E spacecraft) of the specific element of “means * * providing an indication” to a specific external location of the ISA. As the trial judge put it, this part of the claims (and the relevant claims as a whole) expressly call for a structure on the spinning body which is limited “to an altitude control system wherein a ground controller is needed to determine the ISA * * * *."

It is clear, however, that these three accused satellites — SENNET II, NATO II and DSCS II — do not provide any indication whatever of ISA to the earth (or any other external source). Moreover, the ground personnel have absolutely no need to know the ISA position, do not know it, and cannot determine it. The calculations involving ISA are wholly done by an on-board computer and are available only there. To find, as the majority does, in this self-contained on-board computer an equivalent of the specific requirement for providing an indication of ISA to the ground (so that the ground can take account of ISA) is simply to obliterate and disregard this element of the claims. These accused structures may possibly obtain “the same result” as Williams but they do not perform “the same function” in “the same way” either literally or substantially. Whether or not this on-board device for calculation would be unob-vious — and there is no finding and (to my mind) no showing that it would have been obvious — its substitution was not a proper equivalent for infringement of this non-pioneer patent because the wholly on-board computer device operated in a different way to perform the different function of a significant calculation unrelated to ground personnel. 2 Unlike the Court of Claims decisions cited in the court’s opinion this is not the case of a “sophisticated” technique of performing the same function in the same way. It is a “sophisticated” method of performing a different function in a different way. Even if the standard of “obvious and exact equivalents” (Eastern Rotorcraft Corp. v. United States, 397 F.2d 978, 982 , 154 USPQ 43 , 46, 158 USPQ 294 (Ct.Cl.1968)) is considered as too narrow, the accused devices here are definitely outside the equivalence principle of Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608 , 70 S.Ct. 854, 856 , 94 L.Ed. 1097 (1950).

3. The same is true of the elements specifying the method for controlling the precession jet. In this regard, Williams, again as Judge Colaianni points out, limits its claims so as to require a ground controller, not only to determine the ISA, but also to use the ISA to pulse the precession jet during the desired portion of the spin cycle. As to the latter, the claims in suit also require means for pulsing the precession jet within a fixed time period after the receipt of the control signal. This does not occur in any of the accused structures, nor does the ground location use ISA to determine the execute command. 3

As with the other Williams element (“providing an indication” of ISA) discussed supra, the elements pertaining to “firing” or “execution” cannot properly be deemed equivalents of the pertinent Williams elements. The gist of Williams was that this function was to be performed primarily by the ground location acting externally to the *1368 spacecraft on the basis of an indication of ISA transmitted to that location. 4 The S/E spacecraft, on the contrary, utilizes an on-board computer and command storage means for receiving and storing a different type of control signal (as well as also using on-board ISA data); ground personnel have only a limited, secondary role and do not take account of ISA. Moreover, in Williams there must be a fixed time period between the receipt by the spacecraft of a control signal and the activation of the precession jet. In the S/E satellites, in contrast, neither the ground nor the execute signal operates to activate the precession jet within a fixed time period (instead, that period varies). The sum of it is that the S/E structures perform a “different function” in a “different way” from those claimed by Williams — and are therefore not within the Graver principle.

4. The result, as I see it, is that the doctrine of equivalents cannot be employed in this case without taking an impermissible quantum leap outside the perimeters of that principle as it should be applied to the Williams patent.

. SKYNET II, NATO II and DSCS II do not have either means; none of the accused S/E spacecraft (including the three just mentioned plus IMP (H and J)) has the second means.

. The majority quotes Hughes’ expert as testifying that it would have been obvious to place the calculating device on the spacecraft but the Government’s witnesses testified that this device was not an equivalent.

. The trial judge put it: “[Hughes] admits that in Williams the jet is activated directly upon receipt of the control signal while in the store and execute systems the command signal is first stored and verified. The later execute signal in the store and execute systems sets the original command into action but there is no fixed time interval between the receipt of the execute signal and the firing of the precession jet. No command signal is synchronized with the ISA. There is no structure on the store and execute spacecraft which acts to pulse the precession jet within a fixed time period after the receipt of a control signal.” In Williams, on the other hand, “[in] order to permit the ground control to pulse the precession jet during the proper portion of the open cycle, there must be a known fixed time period between the receipt of a control signal and the activation of the precession jet.”

. I have already indicated, supra, that in my view the prosecution history reflects strong emphasis by the applicants on control through an external location. The trial judge has also taken that position.