Opposition Brief — Majuri v. United States

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52

APPENDIX B

ot the “Uited States: Court of eins

No. 86-66 -

"+ * (Decided March 20,1970) #

SAMUEL L. PALMER AND STANDARD PARTS &

EQUIPMENT, CORPORATION’ vy. THE UNITED

=o er : ios

Herbert J Brown, attorney of .record, for “plaintiffs.

Munson H. Lane, of counsel. %

James. D. Stokes, Jr with whom was Assistant Attorney

General William D. Ruch Ishaus, for defendant. |

: he =

Before Cowen, Chief Judge, Larsmorr, Derren, Davis,

Cetiins, SKELTON and Nicuos, Jglges. *

,

a,

# ry a *. OPINIONS ° :

Per Curtam: This ease was referred ‘to Trial Commissioner

JamesF. Davis, with directions to make:tindings of fact and”

recommendation for conclusions of law under the ordér of

reference and Rule. 57(a) [since September 1, 1969, Rule 134

(h) J. The«@mmissioner has-done so in ay opinion and report

filed on/September 9, 969, Exceptions to the commissioner's

opinigh, findings of fact and recommended conclusion of law

‘were filed by defendant and the ease has heen submitted to

. the court on oral argument of cgunsel and the briefs of the

parties. Since the court agrees with the commissioner's

opinion, findings and recommended conclusion of Jaw, as

hereinafter set forth, it hereby adopts the same as the basis

for ats judement_in this ease. Fherefore, plaintiffs are en-

titled to recover reasonable and entire compensation for un-

e *

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53

iuthorized use by defendant of the valid and infringed patent

" ¢laim and’ judgment is entered for plaintiffs with the amount

of recovery to be determined pursuant to Rule 131(¢) (2).

OPINION OF COMMISSIONER

Davis, Commissioner: This is a patent suit under 28 U.S.C.:

§ 1498 to recover “reasonable and entire compensation” for . °

~ unauthorized use by the government of plaintiffs’ patented

‘gency lights, particularly useful for mar

.

invention. Only the issue of Jiability is before the court; ac-

.. counting, if any, is defbfred to later proceedings. The patent.

in suit, issued to Samuel L. Palinér in nak Sap to emer-

g airport run-

ways at night. Palmer is one plaintiff; his coplaintiff is

Standard Parts & Equipment’ Corporation ( hereafter

“Standard”), the exclusive licensee under the patent.

.This case was earlier before the court en defendant’s

‘motion for’summary judgment thatthe patent is invalid:

as” “anticipated” under 35 U.S.C. $102 @ “obvious” under

#8 U.S.C. § 103 in view of certain prior art patents, The trial

commissioner recommended denial of the motion. Palmer et _

al. v. United States, 155 USPQ 524 (1967). The court af-

firmed, per curiam, Samuel L. Palmer and Standard Parts'‘&:

Equip. Corp. v: United States, 182 Ct. Cl.’ 896, 156 USPQ

~ 689 (1968), remanding the case for trial and nofing that it

m

was leaving open “the issue of the validity of the patent

under 35 U.S.C. § 103,” and “the impact upon this case of

the rule of General Electric Co. v. Jewel Incandescent Lamp"

Coz, 326 U.S. 242 (1945).” | late .

‘Trial was held. Plaintiffs introduced evidence of commer-

cial success, felt need, and failure. of others, all of which

the U.S. Supreme Court has held may constitute “secondary

considerations” in tesolving the issue: of “obviousriess or.

unobviousness” under 35 U.S.C. §-103. Graham v. John Deere

Go., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). Defendant

_ introduced additional prior art, not considered by thé Patent

Office, and adheres to its contention’that the patent is invalid

ynder 35 U.S.C. §§ 102 or 103. Defendant also says the patent

is. not infringed and is jnvalid under 35 US.C.'§ 112 which

requires, among other things, that patent.:claims “particu:

larly point ont and distinctly claim” the invention”

t

aan “4

For reasons ia a expressed, the potent is held valid and

infringéd.

ar

‘ °

Patent in suit xy *

Palmer's: patented invention is the essence of simplicity. It-

is a battery-operated electric lamp secured to a bag filled

with ballast, such as gr&vel,.sand or the like. By way of back-

‘ground, Palmer served in World War IT, and in the Korean

War as an Air Force pilot. Flying in Asia inthe 1940's, and

later in Iceland in the early 1950's as operatéons officer of the -

Icelandic Defense Command, he recognized the ‘need for a

safe and dependable portable landing light for use with tem-

porary or emergency landing strips oy with establishtd air-

-fields in the event of an electrical jtower failure, at night.

Kerosene’ smudge pots-were commonly used during both

wars. However, smudge pots were not entirely satisfactory .

beeause they created a fire hazard, required liquid fuel, pro-

duced smoke, and were dirty to handle. Ralmer’s concern for

adequate emergency lights was shared by Col. M.A. Elkins,

formerly. commanding officer of Andrews Air Force Base

(AFB), who served w ith Palmer i in the Air Force in Iceland.

/

’

Elkins recalled occasions in Icela 1 Smudge pots were.

used but were unsatis¥actory because unstabl@en_snow, par-——-——

ticularly in high winds. Elkins also recalled fires darine his

Air Force career éaused by ove evturned smudge pots at the a

scene of aircraft accidents. .

Sometime during or shortly after serving in Iceland,

Palmer conceived’ the idea of-a battery-operated emergency

light having a flexible support base filled with loose ballast, .

‘he ballast being removable from time to time. The light was

intended to be.mobile, dependable, nonhazardous, and useful *«

under. all adverse weather and terrain conditions, In 1953, °

Palmer made and tested several pfototy pe devices, the de-—

tails of which are not clear from the record. -

In 1935, Palmer filed his patent applic ations \S described

in the specification and drawt ,*, the light consists of a bag

withan open mouth in which an electric lamp is inserted and

Pie which ballast is added tosor removed from the bag. = *

‘Fhe bag is made ofUlexible materjal, such as canvas. Material

at the mouth of the bag is hennhed around a stiffener wire

which provides | ue ‘ireular Gpening. The lamp comprises a

a

transparent dome, a reflector gti incandescent bulb, a bat-

tery receptacle, a battery, and associated wiring.*A clamp,

similar to an automobile radiator hose cl: amp, holds together

the elements of the lamj) and sec ures them in thé bag opening,

Ballast is put into or taken out_of the bag by loosening the

“clamp and remov ing the lamp. _

The “crux of the invention,” so plainti ifs assert, is that the

bag is “normally empty” and is intended to be filled with

ballast in use and enrptied of ballast when-not in‘ use. Thee

patent specification’ says: ' z :

Ke * * Ok *

.

‘ Another object [of the i invention] is to provide a col-

_lapsible support for an electric emergency light which

‘may -he readily filled with. natural ballast. such as sand,

gravel, broken ice or snow available at the place ‘of use.

* - * Sfeeopee * >

In operation, the bags * * * may be filled with any

convenient ballast * * “* and dropped from a truck

_ intervals along the borders to be outlined. * * * Ae

ballast should be remoyed when -the emergency light

“units are not in use so as to preserve the bags. fae

” * i * is -

_ In 1955, soon after filing his patent application, Palmer Po:

entered inte-+tHeense Contr: act with Sta-Parts Manufacturing

‘ Company, Fort Worth, Texas (hereafter “Sta-Parts”), to—

make a device called the “Bekon” light?The “Bekon” différs

from the device disclosed in the patent specification’ in the

following material, respects: (1) The electric lamp is: per-

_Manently secured. in the/mouth of the bag bya metal band’

which surrounds the bag’s throat; and (2) ‘ballast is added |

to or removed from the hag through a zippered. slot on one’

“side. Palmer and representatives of Sta- Parts'v isited Wright-

Patterson Air¥orce Base, and Army personnel in W ashing-

ton, D.C., soliciting interest-in the “Bekon” light. The Army

tested it in 1956; evaluated drawings sibmitted by Sta-Parts;

: and in 1959 issued a mihtary, spe cification setting out” re-

quirements ‘for “an emergency light substantially. like thes

“Bekon.? In’ 1962. “the Defense Department issued: a tri-

Service military specification oP ating the earlier Army

specific ation.

Plaintiffs have furnished pay of “Bekon™ lights to

. defendant under inilitary specification since 1959 for us

7

ot

bye all thee military servides. Some leds were furnished to

the A ir Foree even earlier. The Vrmy has been the largest

procurer, purchasing the lights either as igdividual units or

together with canvas earrying bags in which 12: lights are

stored in separate -poekets without. ballast. The carrying bag

as of rugged construction and is desired to be transported

by hand or vehicle from place to place, or dropped by hele

copter; and the lights are intended to be filled. with balkst. |

~ where used.) The Air Foree has used the lights to line @un-

Ways in emergencies. and to mark helicopter landing areas,

Colonel Elkins, while at Andrews AFB in 195), tested “Be

kon” lights and precured ao subst antial number: The Tights

were filled with sand ballast and stored on tow trailers for

-f

ready availability ih event tof aireraft emergency landings.

(4 Toast ones. Lights were transported to another Air Foree

base, the ballast being removed before shipment, -

Abont 1965, defendant hogan procuping emergeney lights,

in all material respects identical to the *Bekon’ ‘light, from

SOUTeeS other than plaintiffs. This sit followed:

The pate ent ‘Tain

‘i he sole patent claim reads:

An emergency y light compr ising:

‘a normally empty flexible-bag,

a self contained: electric light unit comprising

a battery housing,

means supporting a light souree in Operative . *

.-association with said housing, and

a transparent cover enclosing — light

wapecctagsk,

means attac Tring suid bag to said unit in such.

‘ manner as to provide, whén filled with suitabTe

loose weights, a base for said unit, ,

an aperture in said bag through which said

weights may be inserted or removed, and

means for opening said apres to permit :

filling said bag. ~ :

The hags are stenetled with instructions: “Fill with ballast. before asing.”

: ’ ad ”

a

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- é

‘appears to be that it is misdescriptive. Defendant, s: ays,

. . -

A threshold issue is the scope and meaning of the claim:

Defendant says the elaim fails to comply with °5> U.S.C.

§ 112° because (1) the phrase “normally empty” is Shaz¢ and

indefinite”; and (2) an element of the claimed combinati lO,

viz..the circular clamp, is “twice recited” thus rendering the

claim ‘ambiguonis, 3 yague and indefinite.” A principal pur-

pose of § 112 is to’ require patentees to define their inventions

with such particularity that would-be infringers know the

metes and bounds of legal protection to which the pate ntes

is entitled. Brooks v. Miske, 56 US. (15 How.) 212, 214-15

(1853) ; Nelson v. Batson, 322 F. 2d 132, 188 USPQ 552, 553

(9th Cir. 1963). Claims are to be construed in light.of- the —

specification. Doniiuion Magnesium ) Lid-+. United States,

162 Ct. Cl. 240, 320 Fy 2d 388,138 USPQ 306 (1963)? And

claim ‘construction, a ‘practical matter, should be done on a.

rational basis to avoid unreasonable and unjust. results,

pipe Industries, Tne; v. Schumann, Lit F. 2d. 209, 45 VT SPQ*

2 (7th Cir. L103 7V W alker, Patents § 264 ( Deller’s 2d ¢ d.

ro Defendant 's objection to" the phrase “normally empty”

‘* ££ +

if the claimed device is really supposed to be an ‘emergency’

light it would not be ‘norm: tly empty’ but. ratlter jt would be}

‘normally full? of ball: ast so as to be ready to set up ona ay.

, ho 4

Tinw: ay.’ " 7 - LF

Though not expressly, de fined .in the .patent: speeific ation,

we think the phrase “norns: lly empty”. is clear when read in

Tight. of the disclosure as a whole. It states. the patentee’s

concept that the ballast bag is intended to be. filled with bal-’

Igst-prior to and in use and ¢mptied of ball: ast otherwise. Tie

ba ice described. in the patent spec ification i is directed tothat :

end, though the specific embodiment disclosed is not 96 prac- *

tical as plaintiffs’ commercial “Bekon” light, No Aoubt, as

defendant suggests, one Could fill the bag with. Pallast and

keep the bag filled throughout its life, in which’ case the bag,

would not be “normally empty.” But that isfriot the mode .

_ use contemplated by the patentee, nor is it the way the bags ,

are actually used. The patent teaches using “natural ballast”

? Section 112 ences

-The specification shall conclude with one or more claims” particularly

pointing out and distinctly claiming = subject matter which the applicant’ ss

regards as his invention. * * ©

Le

os rae ‘ - ; —

08 |

available at the use site, such as “s: and, gravel, broken ice or

snow,” and also suggests removing ballast when the lights

tre not in use “to, preserve the bags.” As already ‘noted, the

“Army uses the bags precisely as contemplated in fhe‘patent,

i.¢., the bags are filled on site and. emptied thereafter before

transport. The Nir Force kéeps the bags filled, when on tow

‘trailers and re ady for use on runways, but empties them

prior to shipment elsewhere. || * ao ee

* Hefendant further argues th: ut the claim is Becescaent ‘be-

cause the circular clamp: is “twice recited,” once as “means

attaching.said bag io snid unit” and again as “means for open-

ing said aperture to permit filling said bag.”-Plaintiffs deny

double recitation of the clamp. But as the claim must be con:

strued to-be supported by the specification, the clamp i is ate

least part of each “means.” (See finding 7.) In any ‘event,

double recitation of elements of combination inventions does

not necessarily render a claim vague and indefinite, particu-

larly if the claim i is drafted in terms of means clauses under

a5 USA 8 § 112, ov if an element ‘performs more tlran one

. function or overlapping functions. PAi///ps v. Lynch & Larerw,

367 FE. 2d 601, 607, Lit USPQ 400, 405 (CCPA 1966); 4 ilis,,

“Patent Claims’, $17 (1949). - stated by the Court of.

“Customs and Patent Appeals } in Jn ve Aelley, 805 F.2d 909,

916,154 USPQ 397, 402 (CCPA 162), ° ‘The governing con-

sideration ix not ee cn shixion. but rather is what is a.

reasonable construction of the language of the claims.” Be-

cause the bag. disclosed in the patent specification has but

one aperture, the clamp serves dual functions: it closes the

bag to’hold in, ballast and secures the’ lamp in the bag. It

therefore is properly considered an’ element of each means

clause and does not render the ¢ aim indefinite. Accordingly,

the claim complies with 35 U.S.C, S 112. a

-3 The somewhat unorthodox manner in which the claim is drafted can be

explained by applieant’s sire to include within its scope the commercial

version of the invention, the “Bekon” light. Since’the ballast bag of the “Bekon”

has two apertures (one for the lamp, one for ballast removal) rather than‘one-

as disclosed {in the patent specification, the claim was written to cover both

embodiments. Read literally, the claim comes closer to defining the “Bekan” |

light than the device disclosed in the patent specification and drawing. However,

defendant has never contended, nor did the patent examiner, that: the claim is

not supported by the disclosure, as it must be under the law. 35 U.S.C. § 112;

Patent Office Rule 75 (37 C.F.R. § 1.75). Construed ag set out in finding 7, the

claim is so-supported. } :

4

4

2

oY e:

e

Validity

Defendant says the patent claim is invalid under 35 U.S.C.

§ 2 (1) as anticipated by a U.S. patent to Ford et al (“Ford -

paterit”).* Alternately, defendant siys the claim is invalid ,

under 35 U.S.C, § 103 as defining an invention which is obvi-

ois within the me: ining of thestatute. To anticipate, a prior

art reference must disclose all the elements of ae laimed com-:

bination , or their-equivalents, functioning in substantially the

‘sumo way to produce substantially the same result, Straussler

v. United States, 168 Ct. Cl. 852, 339. F. 2d 670, 148 USPQ

443 (1964); P almer, supra. The F i patent, Issued in 1951

and entitled-“Safety Stanchion,” teaches a “collapsible or

fluid inflatable safety stané hion” e use as a “highw ay warn-

_ ing device, or similar form of danger signal.” It is made of

rubberized fabric and 3 ™ said to fill a need for safety stan-.

chions which cause no “serious bodily injury and pr operty

damage asa result of persons or vehicles colliding with them.”

If comprises in essence an inflatable tube base, four upright ’

infl: aut thle Support. tubes around’ which, is indeed: a fabric

7 Sheet, an inflatable tubular ring at the top of the support

tubes, and a “flasher light or signal” mounted on a wood —

platform atop the tubular ring. Though no dimensions are

set out in the patent spec ication, the drawing suggests the

device to be about 3-4 feet high. In use. the support. tubes and

tubular ring are inflated with air to vertical upright position.

The base is filled with water to stabilize the stanchion against

ov erturn( Other weights such as “water, soil, stones or other

forms of weighting means” e: in be put: into'the deyi ice through

- the top by removing the wood platform.

Though totally different from plaintiffs’ emergency ‘light

in appearance, size and modé of use, defendant says{ Ford

anticipates because it teaches a “battery- -operated light hav-

ing a collapsible base adapted to receive loose weight ballast .

material through an opening at its top.” We hold, however,

that despife certain similarities in principle between the

devices, there is not the identity of means, function and

result necessary to make out anticipation, For example, Ford’,

does not have a’ ‘Bag whicly is “4illed with suitable loose

weights” within the meaning of plaintiffs’ specification and

“claim, Defendant Tecognizes this, but. argues that “the stan-

é

4

(i) an

chion could he filled> with: halla: 4 to the fop.af that were

edestred” thits us ng the stanehien waills’Sto retain: that bal

last and sepve.as a bag. Nothing i in Ford suggests sue fh uses.

andi faet. if is contrary to the pateptees’ intent since the.

stanchion, pesitient and titled yith pressurized aia, must give

way when hit bya vehicle. Hf tilled with ballast mutterial, ait

would no lonver be a resilient device. Therefore, defeydant’s

inferprret ation of } Hovd ws ante ipatory pr lore art Is without

merit, - , j oe

Warether the .elaiyn le firtes an invention obvi TO under of

US.C. 8 10% requives factu: al aniaby: sis of ch) the seope and

content of the prior art (2) thé diiferenc es bet ween the prior

ant and the elaim Tn assues amd. (3) the level of cra be

Skill in the pe riiment art, Secondary coms siderations sueh as

commercial sueces ss, sat M fying felt need, and f iilure of others |

oy have teles: anee. Graham . ‘John Decre Co., supha:

Martin Ma a ita €or , mat nited Nile a. ia cx. Cl. i Oe

od OTD SUSI 28 (1987 ).<'T'o show the pe iov art,

defendant ge Pt on Hi patents and some earlier militaryespe

eifieations whieh teach, Among other things, a variety of

np GS. Sa emergeney: hehts. (Findings, 12 19.) None

the prior art slehts, however, use plantitls’ idea of a

flenibte bags support base in hie h ballast can-readily be.

aude led to or removed from thi: bag. In fact, the prior devices

show that despite no dearth of activity in the art.al ‘portable

emergeney Helits, partigilarly during: and just after World

War TR na one came up with Palmer's simple but. highly

-practical ideasuntil 1953, eventhough the problem of ade:

quate aireraft emergeney lights is as old as flying itself.

This is persuasive evidence of unobvionsness, Also pertinent.

is the fact that for the most part, the prior art devices are

relatively complicated and expensive to make ‘and’ repair,

and are not adaptable for use over.a wide range of Operating:

conditions, Under the circumstances, therefore, the simplicity _

of plaintiffs light 1 is.a hallmark of its unobvionsness. Aron-*

Son ¥, Loy Der IMCER, Tne “ LF. Pd 9] (3d Cir. 19V-4) 2: 7In Veen

vo United States; 1A Ct. CL S84, 386 F.2d 162, 156 USPQ

403 (1967). 7 . :

Defend: ant. stresses two references, not cited in the Patent

Othe e.a. U.S. patent to Gearon et al (*Gearon” ) and i a Brit-

a

ish wiaede t to Scott. iPoxwell, both of which were considered

by this court in the earlier proceeding on summar Vv judgment.

_ Gearon relates to signal flares of the type used by trainmen

fo warn succeeding traflic of an, emergency. The flare. is

mounted.in a perforated: paper bag -filled, with sand which

serves as a weighted base. When-thrown‘from a moving

train, , the bag, upon hjtting the ground, bursts at the perfora-

tions and sand seeps oyt to form a wider wed support base

for the flare) Seott-Foxwell teac hes a flexible bag support °

base “for supporting articles [e.g.. a reading lamp] on un-

even, slipperysof yielding surfaces.” The bag has a circular

opening through’ which “an amor phous or puly sala see

such as kaolin * is put as ballast. The opening is sealed oy.

‘ sandwiching. bag. material at the periphery between two

circular discs. held together by. a screw and nut. The dises;

besides sealing up the bag, serve as a support for the re: ading

damp ar other article attached to the bag. There is no’ sugyes-

tion in the patent that the dises be removed from time to

time to add or remove ballast, there being no apparent reason ,

to doso, se

Patents ay presumed valid. 35 U.S.C. § 282; De fendant

Says, however, thé presumption of ‘validity 3 is overcome here

because Gearon “and Scott. Foxwell are more pertinent prior

art than considered by ‘the Patent Office. During prosecution

of the’ patent applic ation, the patent. examiner considered.

prior art. patents in.two categories: (1) Those which teach an

electric light secured atop a Support suchas a’ portable metal

base, and (2). those which. teach beanbag or loose ballast-con- ’

taining supports in combination. with ashtrays, baby bottle

: holdets, and the dikes The examiner rejected broad claims to

the combination of, an electric’ light. with a loose ballast-con-

taining: support on grounds that such combinaton. would be:

_ obvious in view of (1) and (2), above. Applicant then nar-

rowed the scope ‘of the claim by reciting as a limitation,

‘unong. other, things, that the bag was “normally empty”; 4,

difference not taught by*the art and ene crucial to. a proper

defining of the invention. The examiner thereafter allowed

the claim. Gearon does not disclose a normally empty sup-.

port bag i in combination with a battery-operated. light. It is

.* Kaolin fs finely divided aluminum silicate, somewhat like taleum powder.

|

no more © pertinent than prior art: considered by the Patent

Office. While Scott-Foxwell suggests the combination of a

readin lamp with a loose ballast-containing bag, a concept

eloser to the device in suit than any considered by the Patent

Oflive,it still does not teach the essential featar¢s upon which

patentability was predicated. Aecordingly, the presumption

” validity is not overconie, See Preformed Line Products Co.

. Fanner Mfg. Co., 328 F. 2d 265, 971,140 PSPQ se 505

(oth Ci ir. 1964), cert. denied, 379 U.S. 846. jf >

Plaintiffs stress commercial success and satisfy) ing fc I need

~

\ as indicia of unobyiousness. While thesé/ fae tors are but

“sedondary considerations,” they ard entitl¢d to weight here.

Thg government. has. procured thousands of the plaintiffs’

lights, ‘which in itself indicates satisfaction of felt need. No

doubt in most instances, they replaced smudge pets or other

~ less suit able eqdipment., And so far as the record shows, the

milit: ay services specify no other emergency light which is

sO <iniple. of construction, relatively inexpensive, easy to

maintvin and repdir, and readily transportable for use under.

widely varying operating conditions. (See finding 19. \ Colo-

nel Klkins, while commanding offic er at ‘Andfews AFB,

» wrote an article for “the. MATS flyer,”’a publication of the

Military Air Transport Service, praising plaintiffs’ “Bekon”

= The article says, among other things— ;

The problem of ballast, a minor one, also came’ in for

expe rimentation. Andrews AFB finally settled on sand,

after trials with gravel. It is felt that this ballast. will

prove suflicient even under the stress of high winds or

direct. jet? blast. Any type of ballast can “be used—snow,

dirt; rocks, water (let fr eeze), among others.

‘Thave long felt the need for a more satisfactory emer-

gency light, and through the continuous testing con-

ducted by Wing Operations and Transient Mi aintenance,

I feel that we have found the answer in Bekon. Hq

USAF and other major commands have been clogely

Ww atehing our lead on this. ;

Bae Andrews, the Bekon has meant inoremaed readi-

ness, mobility, ‘and flexibility of lighting. And it may

soon become as much apart of the Air Force as its

namesake, the beacon. eae ,

-In sum, giving due regard to the prior art, the Piitent.

- Office file history of the patent application, and the secondary

considerations of commercial success and satisfy ing felt iieed,

we hold that plaintiffs’ patent satisfies the requirement’ for’

patentability under 35 U.S.C. § 103.5

Infringement

Infringement is made out if an acc used tdevi ive uses the

same means functioning in substantially the same way to.

accomplish substantially the same result. Padow shiv. United

States, A35 Ct. Cl. 93, 140 F. Supp. 544, 109 USPQ 2h}

(1956): Barrett v. United States, 186 Ct. Cl. 210, 408-F. 2d

502, 160 USPQ 224 (1968). The accused devices in aj! ma-

terial respects identical to plaintiffs’ “Bekon” light, meets

these criteria and. responds to the terms of the clitim,

Defendant s says, however, thie claim inust. be narrowly con-

, strued to cover only the device shown in the specification and

drawing. Ww e see no valid reason from the prior art or the

Patent Offire file histor v. for. so- limiting the elaim. Zonol/te

Co. & Insulating Concrete Corp. y. U. nited States, 188 Ct. Cl.

lid, 149 F. Supp: 953, 113 USPQ -223 (1957)... However!

even if so-limited, it is entitled to a reasonable range of eqniv-

alents, commensurate with the scope of the invention. Graver

Tank & Mfg. Co. vi Linde Air Products Co. 339. US. 605. ©

(1950); Pratt & Whitney Co. v. United States. 170.Ct. Cl.

829, 345 F. 2d 838, 145 USPQ 429 (1965), In the accused de-

vice, ballast is adi lec to-or‘removed from the bag through a

slot on the bag’s side, rather than through the opening which

houses the lamp. While no doubt the accused structure is a

practical improvement over the embodiment shown in the

“patent, its means, function and resilt are essentials the same,

,*

’ 5 The “rule” of the General Electric ease, alluded to by this court in earli er,

proceedings, is not inconsiste nt with holding patentibility here. General Eile:

tric, decided in 1945, simply held that the invention there in suit, tho ats

nevel,* was unpatentable because it lacked “invention.” See General Electric,

supra, at 248; oe Court says: “* * * it does not appear in the present

ease that prior go Pi pkin Clectrie-bulbs bad been frosted on the interior with

rounded rather than. sharp angular crevices or pits [hence, novelty]. How-

ever, the Court then said, “In view of these [prior art] disclosures, it is difficult

to see how the sre could be invention in frosting elthe ‘r the outside or inside of an

électric bulb: * * #,” {Emphasis added.)

ee he 1952 Patent Act, in 35 U.S.C. § 108. for the first time stated the require-@

ment for “invention” in terms ef obviousness to those skilled dn the art: ana

the Supreme Court in 1966 set out guidelines under which § 1085 is to he

applied. Graham, supra.. Those guidelines are bere followed. They were also

followed ili van Veen, supra, another ease in which this court considera]

General Electric. ; : .

“a

to “ .Y ‘

e .

“

Finally, defendant says plaintitts have not proved [ .

fp ingement because they failed to show that the gover nment

uses the accused device in the same manner as plaintiffs.

“Bekon” light. While it is true plaintiffs’ proofs were directé a

to how the “Bekon” is used, the acensed device and thé

“Bekon™ are,in all material respects, identical and are made

and procured: under the same inilitary specification pre-

sumably for the same purpose. Similar use can be inferred.

Nothing in*the record suggests otherwise.

Ac cordingly, the claim is infringed.

~¢

" _Fixprves OF Pr. ACF . -<

. This i: isa patent suit wndne 28 US 1498. Plaintitfs

wa reasonable and entire sompensedto ion as unaythorized +

use by and manufacture for defendant, the United States, of |

the invention disclosed and claimed in U.S. Patent No.

2S06,151, entitled “Runway Emergency Lights,” issued to.

Samuel L. Palmer on September +10, 1937, oh an application

led Fehkruary Lo, 1055, Plaintitls’ petition’ was filed in this

court on March 7, L066 :

"2. Samuel L..Palmer, owner of the patent in mn is one

pe The other plaintiif, Standard Parts & Equipment

Corpotation (hereafter SStandard”), is a ‘Texas corjoration’

With its principal place of business m Kort Worth, "Pexas,

Standard is exclusive licensee under the Palmer patent by

, Virtue of license agreements with Palyrer dated March 25,

155 and August 1, 1059. .

3. ‘Ehis case was earlier before the court. an dete ndant’s

motion for summary judgment op grounds that’ the patest

isdnvalid under 35 U.S.C. $$ 102 and 103 in view of certAin

prior art patents. The trial commissioner. recommefded -

“op of the motion. Palmer et al. vy. United States, 155

USPQ 524 (1967). The court affirmed, per curiam, Samuel - *

L. Palmer and Standard, Parts & Equip. Corp... United

States, 182 Ct. Cl. 896, 156 USPQ 689 (1968) , remanding the

cease for trial and noting that it was leaving entirely Open °

“the issue of the validity of the patent under 35 U.S.C. § 103”

and “the impact upon this case of the rule of @eneral Liec-

trie Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242

(1945). | /

ene

4. The issues before the court are patent validity under *

35 U.S.C. §§ 102, 103 arid {12 and patent infringement. The -

parties have agreed to defer trial on the acco nting’ issue, if

any, until a-ruling by the court on the issues a validity and

‘infringement. : oe

5. (a) The Palmer patent relates to emergeucy lights, par-

ticularly useful for marking airport runways at night, but —

also useful for outlining wrecked airplanes on.am airfield or

stalled vehicles along highways. The emergency light is a

battery-operated electric lamp secured to a bag filled with

ballast, suchas.gra vel, sand, or the like. The bag has an-open

“mouth in which the lamp is inserted and through which

ballast is added to of removed from the bag. The patent spe-

cification Says:

3 x ee , * an *

Another object.[of the invention] is to provide a col-

dapsible support for an electric emergency light which

may be readily filled with natural ballast, such as sand,

_ gravel, broken ice or snow available at the place of use.

* We: ere : ee eee *

In operation, the bags * * * may be filled with any

convenient ballast * * * and dropped from a truck at’

intervalssalong the’ borders to be outlined, * * * the

‘allast should be removed when the emergency light

Wnits are not in use sp as to preserve the bags *'* *,

‘ we Ae * ae Marea x:

As described in the patent specification and shown in patent

Figs. 2 and 3, reproduced herein, the bag 22°is made of “any

Suitable flexible matevial, such as canvas. fabric nylon or

flexible. plastic materials such as polystyrene.” The electric

lamp unit: comprises ,a transparent dome 10, a reflector 17,

an incandescent bulb 20,-a battery receptacle 16, anda battery

‘in the receptacle (not shown in the drawing). The lamip unit

: fs secured in the mouth of the bag by a circular clamp. 14,

‘similar ta an automobile radiator hose clamp, Which has a

thumb screw for loosening or tightening the clamp. The

fabric at the mouth of the bag is hemimed around a stiffener

wire 24, which provides a circular opening to the bag. Clamp

_14 is U-shaped and holds the lamp in the bag by engaging

{a) a shoulder 12 on the lower part of dome 10 and (hb) stif-

*s

Parent 1n Suir a

fener wire 24-which res sin groove t9-around the top of bat-

tery réceptacle 16, thereby, fastening together the dome, re-

flector and battery receptacle. Ballast is put into or taken out

of the bag by loosening the clamp, disassembling the lamp

unit, .and removing the battery receptacle, thereby opening

; the mouth of the bag,

e

(b) :Plaintiffs’ commercial device, called the “Bekon” light,

differs from the device disclosed in the patent in the following

material respects: (a) The lamp is housed in a cylindrical

canister which is permanently secured in the mouth of the bag

by a metal band which surrounds the throat of the bag, and. | ~

(b) ‘ballast is added to or removed from the bag through a

zippered slot near the bottom of one edge of the bag.

6. The sole patent claim reads: :

An emergency light contprising

‘a normally empty flexible bag,

_~

Ps .

- . —

a sett contained electric light unit comprising

a battery housing, ,

‘means supporting a light source in operative

associationewith said housing, and |

a transparent cover enclosing said lj¢ht source,

means ig said bag to said unit-in such manner

as to provide, when filled with suitable loose weights,

a base for said unit, oe

an aperture in said bag through which said weights

may be inserted or removed, and

means for opening said apertupe to permit filling

said°bag. ’

. . \ ® . f

7 (a) The patent application, as filed by Palmer in 1955,

asserted three claims. Claim Lread:

An emergency light comprising

flexible bag. having & mouth in its upper end, »

loose weights within said-bag,

* a self contained-electric light unit within the mouth

eres - 0f.said bag, and

a transparent cover over the lanip of said electric .

. light unit. My a5 ee |

Claim 2 depended on claim 1, further reciting a “detachable

chunp” for holding the light unit in’ the mouth of the bag,

Claim 3 also depended on claim 1, further reciting a “non-

bredkable flat material” on the bottomofthebag, °

The patent examiner rejected all claims as “unpatentable

over’ certain-prior art patents. Applicant then added a fourth.

claim’ and further responded by rebutting the examiner's

position regarding the téachings of the prior art. Included

with the response was a copy of an advertising brochure show-

ing the “Bekon” light which was said “to pictorially illustrate

the advantages of applicant’s invention.” The examiner again _

rejected all the claims, making the rejection final. ’

Thereafter, applicant sought and was granted an interview

with the examiner, pursiiant to Patent Office Rule 133° (37

C.F.R. § 1.133). All claims were canceled and new claim 5 -

(the ‘claim in suit, finding 6) was added. In remarks accom->

ad

el

. € .

As rewritten, the new claim sets forth sufficient struc-

_-panying the amendment addirfe the new claim, applicant —

. noted, among other things, that

ture to accomplish applicant’s intended purpose, namely, .

an emergeney light capable of being dropped from ‘a

> moying vehicle. This is dovelened | in the claim by reciting

a normally empty flexibte bag and means filling and re-

moving the loose weights, together Ww ith stifficient striv-

ture to complete the claim. * ‘*

“The examiner allowed « claim 2 5 and acai the: ‘applic ation to

issne, ae

~tb), The-allow ed claim is narrower in scope and differs, in

form and content from earlier asserted claims. The terms .

-bag. ;

8. ‘The parties Sieetas that defondatt procured from a

po a other than plaintiffs, within the statutory recovery

“normally empty,” “means attaching said hag to said unit.”

“aperture.” and “means & opening said aperture” were

used for the first time in the new élaim. They find no express

antecedent basis in the patent specification or claims as filed.

“Normally empty” refers to the concept, noted in the speci--

fication, that the hag ¢an be filled with ball: ast at the situs

of. ase and the ballast “removed when the * * * units nre

/ :

hot In nse so as to preserve the bags * * *.° “Means attaching

said bag tossaid unit” refers to clamp 14; stiffener wire 24,

and groove 19 in the battery receptacle. “Aperture” refers:

to the month of the bag, the only opening disclosed through

which ballast can be: inserted or removed. “Means for open-

ing said aperture” refers to clamp.14 and battery receptacle »

16, both of which must be remeved to open. the mouth of the

‘

period, at least one emergency light designated Ty pe ITT. B

made in accordance with military specification “MIL-L-

19661A, dated May 22,.1902, and shown in U.S. Army Corps ©

-of Engineers draw ing-No. 13207E&8820: Defendant’s Ss procured

device’ is in all miaterial respects like plaintiffs’ “Bekon”

light. (Finding 5(b).) Both devices have substantially the

same means operating in substantially the same way to pro-

duce substantially the same result.

9; (a2) Samuel L. Palmer, the inventor of the pntent in

suit, served in World War‘II and in the Korean War, as.

_an Air.Force pilot. While flying in Asia in the: 1940's, and

ae R

*

\

later in icel land ‘in ‘the eattly 1950's as operatéons officer of

the Icelandic Defense Command, he recognized the need for

a safe and dependable portable landing light for. use with’

temporary or emergency landing strips or. with established

airfields in, the event of an electrical power failure af night.

Kerosene smudge pots were commonly used during both

wars. However, smudge pots were not entirely s satisfactory’

because they created a fire hazard. required liquid fuel, pro-

duced smoke, and were dirty to handle, he ee

‘Sometime during or shortly ‘after serving in Iceland:

Palmer conceived the idea of an emergency light having :

flexible support base filled with loose ballast. The light was

intended to be mobile, dependable, nonhaz: ardoug, and useful

under all adverse ‘weather. and terrain conditions. Palmer

testified that, in early 1953, he built a Working model, using

_ floursack loth to make an open-top batlast bag as a a support

-” base; corn, gravel and sand as Ballast fa small ean cont: vinings

a flashlight battery and a bulb as a light units and a worm

gear clamp to secure the light wnit in the month of the bag.

The clamp was easily reniovalile to add or/re maye ballast

F -

in the bag. Sometime after February 1953, Palmer built a

similar devi ice, using as a base a canvas bag made to his order

by ‘a: tent and waning manufacturer in Fort W orth,’ Texas.

The details of construction of the second device are not clear

tT the record. Later, Palmer testified he made another sim: ©

(

levice, but with a zipper along one side of the bag for

adding. or removing ballast: and it was tested on a runway

at night at Meacham - ield, Fort Worth, Texas, sometime

in 1953.

(b) Before 1955, Dadi contat ted. repre sndatives ot Sta-.

- Parts Manufacturing Company, Fort. Worth, Texas (here-

after “Sta-Parts”), to diseuss a licensing. contract. In’ 1955,

soon after filing his: p: itent applic ation, Palmer.and Sta- Parts

entered into an exclusive license agreement to make a device |

called the “Bekon” hight; and.in ade ‘the agreement was

amended, transferring it from Sta- Parts to coplaintiff,

_ Standard. Standard is w holly owned by Sta-Parts.

¢ In 1955, Paliner and representatives of Sta-Parts visited

Wright-Patterson “Air Force Baseyand U.S. Army person- **

nel in Washington, D.C, soliciting interest in the “Bekon”

light. In 1956, the Army at Fort Rucker tested the light.

1 ‘ .

f s

of

‘

~

&

T hereafter, Standard submitted drawings to the Army at:

Fort) Belvoir, Virginia, for evaluation; and in) 1959, the

Army issued-a military specification setting out require-

ments for a device subst: antially like the “Bekon” hight. In

1962, the Defense Department issued a tri-service military

specification which included a light like the “Bekon” as one

of several devices: designated “Light, Marker, Portable,

Emergefttcy, Airtield, Battery Operated.” It. was the only

“specitied device with a flexible bag jase for holding. loose.

ballast. Standard has furnished “Bekon” lights to defendant

under. military speeifications.since 1959 for use by all three

military services, Some, however, were Wd earlier to the

. Air Foree. The lights are furnished with emyty bags marked

“Fill with ballast before using.” Most procurement has been

by the Army which pure hased the lights either as mdividual

units or along: With a eanvas carrying bag i in which 12 lights

g

are stored without ballast: The carrying bag is of rugeed:

semi ion and is designed to he transported from place to

place by-hand or vehicle, and even dropped hy heligopter ;

and the Mus are intended to be. filled. with ballast

used. The Air Force has used the: lights to line runways: in

emergencies and to mark helicépter I: anding areas T here Is no

evidence how the Navy uses the lights.-

10..Col. Marshall A. Elkins, formerly Sieimandine oflicer

where

“ot. Andrews Air Force Base, testified at trial. Elkins served

with Palmer in the Air Force in Feeland in the early 1950's

and shared Palmer's concern for ade quate emergency run-

way. lighting. ‘Telkins recalled occasions lr-leeland where

sniudge pots were ysed but were not satisfactory because un-

stable on snow; partic ul: uly in High*winds. He also reeatled

fires ‘during ‘his Air Foree career evused by overturned

smudge pots at the seefie ofaircratt ac cidents,

In 1955 while at Andrews, ETkins tested “Bekon® lights.

Thereafter, a substantial number, were procured ard aed at

Andrews. The lights’ were filled with sand ballast and stored

on tow ‘trailers for. ready availability in event of aircraft

emer rency landings. At leist once, lights were transported

to another Air Force base, the ballast being removed before’

shipment. : ; ‘

.

'

Elkins wrote.an article. in “the MATS flyer” (April 1956),

a.publication of the Military Air

“ce

Transport Service. The. .

article praises plaintiffs’ emergency hight, noting among

‘other things thé “zippered base for ease in loading ballast.”

Further, the article states—

t

[ ~ The problem of ballast, a minor one, also.came in for

experimentation. Andrews AFB finally settled on sand,

after trials with gravel. It is

prove suflicient even under the

| direct. jet. blast. Any type of b:

felt that this ballast will’

» Stress of high winds or

last can be used—snow, °

dirt, rocks, water (let freeze), among others.

I have long felt the need for

geney light, and through the

* ducted by Wing Operations

- I feel that. we thave

. USAF and other major conn

watching our lead on this,

~ become as much a

the beacon.

11. From 1956 to 1968; Sta-Parts

iu more satisfactory emer-

continuous testing con-

and Transient Maintenance,

found the answer in Bekon. Hq

wands have been closely

At Andrews, the Bekon has meant increased readiness,

mobility, dnd flexibility. of lighting.

And it may soon

part of the Air Force as its namesake,

~

and Standard: sold about.’

17,700 “Bekon” lights -to defendant for use by its various

agencies, Sales to other purchaser

S (4e., commercial con-

panies; and state and Jocal governments) during the same-

_ P 7" = ° m7 . ° .

period were about 2,500. Plaintiffs have. not advertised in

nationally distributed: magazines,

“since 1960,

About 4,500 sales flyers

describing the “Bekon” have been circulated to the’ trade

12. De fendant relies on, the f ollowing prior art patents:

© ’

' Patenteé‘and-country

- No.

Consideréd

Date issued by Patent

a Office

D ‘ 7 ; A eit

Allen (U.8.)_...... LRP eee Ae eer e ae: - 1,778,545 Oct. 14,1930 Yes

MOWAT Mean iatebckcrcnakcickeckeuasécsc... 2,450,927 Oct. “12,1948

otenc spate gg POE EE ae RE ete 2,219,974 Oct. 29,1940 “«

Pg sec apticie fae Ot Ca ee _ 2,492,837 Dec. 27,1949 No

DRM Sema thcis had enkocntcaiuscee, cua Des. 136,406 Sept. 28,1943

IN Tis 5 hain ds cain nsncccancaces 1,425,945 Aug. 15,1922 Yes

chseengpererg dsc jeigat TOPE TED Pan tara eae * 546,533 July 17,1942 No

Ford et al (U.S.).. 22-222... bivicdeiauiors 2,561,016 July 17,1951

RON O WO OE iciccncoscnncacavee. 2,547,698 Apr. 3,1951 «

SNE CMP awahovicbssneinnnaccaansecunss.c 2,090,293 Aug. 17,1937 «

scacsnopthe beeps ET TOPE oP A EA 2,346,695 Apr. 18,1944 -« :

-tsetatearpaadh raphe PCLT CTE TEETER Ee 513,223 Oct.. 6,1939

pete Sg oy EPP POPES DOOD SEP ARTE 1,308,809 July 81919 «

Scott-Foxwell (Brit.)......2....2.2........... 622,680 May 5,1949° “

*

. *@

bee “adie two ciel “patent and the Bellow amd. Secott-

Foxwell pi: itents ul relate to-f exible bag support bases. Allen.

DAD teaches “a bag of rubber-ox of other yieldable fabric”

filled with “sand, gravel, shot, or other suitable 3 vieldable

material.” The bag has-straps on top to hold and support

a baby bottle. In one embodiment, the bag is provided with

serew caps by which it ean be opened “for changing, remov- |

ing or refilling” with filler material. Allen 927 is similar in

respects here material-to Allen 545, except that the sche

“base is g bag zippered, along one edge to previde aceess to its |

interior; and within the base bag is a second bag, called an

“inner” bag, which holds filler material described as.a *‘ “loosel®

mass of relatively heavy mobilé partic les.” The patent says,

“By making the i inner-bag readily removable, the outer metii-

ber may be quiekly ‘and’ easily wished .and matntained

sanitary.” . |

Lellow. teacheés'a bowl-sh: aped ashtray sectired to a beanbag

hase. The top of the bag is sectired to the rim of-the bow] by

a metal ring over whieh the rim is curled to’secure the hag

permanently to the | howl, No proy ision is made to change

from time to tinje, the filler material in the bag. -

Scott-Foxwell teaches a flexible bag support hase “for sup:

- porting zrticles fe.g.,a reading lamp | on uneven, slippery or

vielding surfaces.”.The bag has a circular opening through’

whiel? “an amorphous. or pulver ulent-mass” is put to serve -

as ballast or filler-material. A suitable mass is “kaolin,” a

fine, inert powder (aluminum Silicate) used: in. ceramics.

(Hyctires sCremicar, Dicrion ary.” 1929.) Also suggested is ;

sand or clay: The circular opening is sealed by sandwiching

bag fabric, such as chamois leather, at the periphery bet ween

two circular dises held together by a screw and nut. The

sdises, besides sealing up the bag, serve as a support for the.

reading amp or other article attached to the bag. From the

_Jower dise, a series of vanes of semi-circular contour project

down into the filler material to st: abilize the dises.

There is no suggestion in the pafent that the. dises be reo:

ineved from time to time to add or remove ballast, there being

“no: apparent reason to do sos The bag has several holes neat

‘ the top covered by material “pervious to air but not to the

kaoliy filling” to ensure that. no air pockets form and that

the lower dise stays in contact. with filler material.

o o ‘ ¢

: .d4. 4 UO palolitos iv Congdon, Newstead and Reese ali relate

ae to portable electric lights having w dighted support bases..-The

Congdon device-is a “port: able "sel f- -righting post’* * * pri-

‘marily. intended to be employed as a means for controlling

street graflie.” It comprises a vertical post on top of which is

mounted ‘an electric Jamp. The post js supported by a heavy

metal base with rounded bottom, ¢ rie to roll if inad-

vertently struck by a moving vehiele. The np is powered

by “gas or Tiquid fuel, or an electric battery.

Newstead. teaches “landing lights for use on emergency

landing grounds for sireraft: * In-one embodiment, the light

comprises a spherieal meta! casing which houses an. electric

f lead or the like.” The’ devige sets on the ground or, al-

: saad ely,on a coneave base. Because the casing has a rowid

hottom and is w eighted, it. will “roll like a ball when struck

by.an aircraft when landing” and “automatically returns,

- under the effect of its weight, to its pom Spay as soon

as it has stopped rolling.”

Reese teaches a battery- -operated lighting device com-

prising a “small portable incandescent electric lamp,” akin to

an ordinary flashlight, to which is «ttached a base of “plastic

adhesive substance,” such as “modeling clay.” ‘The iis ice As

designed té6 be secured to irregular surfaces, the ¢ lay shaping

itself thereto and holding the light in position “fay a pirac-

tically “indefinite period.” Uses contemplatedt for the device

* are said te-he “hunting for objects in dark places, suth as

“under desks, in safes, closets or the like, for plumbers, elec-

tricians, housewiyes, and furnishing light for repairing

‘ automobile engines where it is desirable to direct the light

upon a small, and.sometimes out of the way part, and where

no means for supporting an ordinary lamp ‘in such manner

as to properly diréct the light are available.” None of the

[s ‘ongdon, Newstead or Reese. devices are designed for readily

varying the nature or quantity of) w eight*he materi: ral in the

hase, ne :

15. The Gearon patent areoey to signal flares of the type

used by trainmen to warn suéceeding traffic of an émergency.

The flare is mounted in a perforated paper bag filled with’

sand which sefves as a‘ ‘weighted base. When thrown from

e

¢ . -

.

&

lamp, a concave reflector for directing the light upward, and’

a battery. The casing is weighted a at its bott6m with a “mass

a

v4

é —s “

a moving train,” the bag, upon hitting the ground, bursts

at the perforations and sand seeps out to form a widéned

support, base for the.flare. The device is intended for a single

use and is to be stored, filled with sand, on the “crossbar ot

a railway-car.”

16. The Ford patent teac hes a “collapsible or fluid in-

flatable safety. stanchion”: for use as: “highwe ay warning,

device or similar form of danger signal.” {t comprises an in-

flatable tube base, four upright support members on the base

around which 1s -seC ured. a fabric sheet, to form an envelope

resembling a” truncated pyramid, an ‘inflatable tubular ring

at the top of the support tubes; and 4 “flasher light or signal”

mounted on a.wood platform atop the iubular ring.

In use, the support members are filled with pressurized

gas (e.g..air) to inflaie the device to. vertical upright posi-

tion. For stability against overturn, the tubular base is de-

signed to be filled with “weighting fluid,” such as. water.

Additisnai weight may be prov ided by “water, soil, stones

faor other fornis of weigh ting means” placed on a wil across

the tubular base near the bottom of the stanchion,- ‘Though °

nebexpressly stated inthe patent specification; the additional

“weighting means” are pat on to the web through the top

of the device by removing the wood platform which ‘sup-

ports the flasher light. The device is made of rubberized

fabric and is said to fill a‘need for safety stanchions which

cause no “serious bodily injury and property damage as a re-

sult-of persons or vehicles colliding with them.” ‘Though no

dimensions are set ont in the patent specification, the draw-

ings suggest the device to be about 3-4 feet high.

17. The Briggs and.Cline patents teach portable emer-

gency lights comprising in essence a metal casing for housing

a battery, 9 transparent dome atop the casing, and a gaseous

dischargefamp (neon) under the dome and operated by the -

battery. The base: of neither device is weighted other ‘than

by the battery in the casing. The Briggs devire was made -

‘and sold by the Emarco Corporation, Dayton, ( Dhio, under

thé trade name “Thoro-Flare.” The “Thoro- Flare” light has

been used by the U.S. Air Force as a runw ay marking light

and by Washington National Airport, Fae ming Vite

to mark obstructions on the airfield.

The Haines patent teaches a highway emergency light,

thie

OK 8H ange

Bis ‘ = 5 ;

{—= :

|

similar in espects here pertinent to the Briggs and/Chne,

devices, except that the lamp is an ‘ordinary. incandescent

bulb'rather than a gaseous discharge tube. The Haines device

is supported in a vertical position by a hollow, bowlshaped

base flared at the bottom for stability. No weights are in

ee eS eae

the base.

18. The Miller and Firestone patents teach portable lights :

for use in the water, e.g., as-Seaplane landing lights.’ The

Miller device comprises a canvas cfsing containing a battery

and a battery housing, a light bulb, and a transparent dome

mounted atop the casing and battery housing. Surrounding

the battery in the casing is foam rubber whigh serves to

- cushion the battery and light when dropped into the water

from a ship or airplane; The patent specification says that,

the device is designed to be “dropped safely mto the water

from a Considerable height. and at a considerable ‘ velocity

as from the top deck of a vessel or from an airplane travel-

ing at night, which will land safely without: damage in the

water, and which, once it enters the water, will immediately

return to the surface thercof and, automatically light up.’

Firestone teaches a self-contained battery- -powered electric

~. light unit for use “to designate landing areas for seaplanes.’

The unit is mounted in a hollow rubber tube, somewhat like

an ordinary automobile tire, which serves as a float for the

unit.-The tube is inflated with air and is colored orange and

black on its upper surface to serve as a buoy‘marker in the

- daytime. In one embodiment, the light tinit does not extend

below the bottom of the tube, so that “it can be used i in very

shallow water.”

19. Defendant introduced into evidence the following sili:

tary specifications to illustrate government requirements for

portable electric lights both before and after the invention

UN Cs, :

- ‘e

_- ee - _ =

‘ Military specification oa Date Originating

, service —

MIL-L-7747. : ‘5 July #1951) Navy

MIL-L-7747A - ; Riki Apr. 17,1953 “Navy

BALE Rs TOOG, 3s soc eanas sets ony > hg is -o-ccane-s S00, 15, 19068 Navy

MIL-L~-19662.. _-. pen Dae i Saye Oates.) Nov. 11,1956 Navy

MIL-I=7591A -.. ieee = aA Apr. 11953 Air Force

MIL-L-7591B. Ee eee. ek a

MIL-L-52088... =... = ERG a Senha . Apr. 23,1959 Army

MIL-L-29061 A... 25. oo eee ng n eee ee eee tem eden ees May 22,1962 Tri-service

a

76

The tri-service specification superseded and consolidated the

latest specification of each service. Army specification 52068

relates to the typeof emergency light here in -suit. In.fhe

tri-service specification 19661A, the light here in suit is des-

ignated “Type III A” and “Type IT B.” :

None of the other devices called for by the above-listed

military ‘specifications (Types I, If and IV) have flexible

ballast bag supports. In general, they have rigid casings

which house batteries, lamps, lenses; and associated electric al

wiring. The batteries are either conventional dry cells or

mercury ‘cells. The lenses are Fresnel lenses, which are spe-

ctally designed: to diffuse ght and constitute part of a

“precision optical system.” Though relative cost data were

not introduced at trial, the Type I, II and IV devices are

more sophisticated and complicated than Type III A or LI

B devices, and’ accordingly would be more expensive.

“

CONCLUSION orf Law:

Upon the foregoing findings of fact, which are made a.

part-of the judgment herein, the court concludes as a matter

of Jaw that the sole claim of U.S. Patent No, 2,806,131 is

valid and infringed. Accordingly, plaintiffs are cutitled*to

recover reasonable and entire compensation for unauthorized

use by defendant, and judgment is entered ‘to that effect.

. The extent of liability will be determined in further pro-

ceedings before a trial commissioner pursuant to Rule 151

(c) (2).

%:

APPE NDIX c

Adjudication of Patent Invalidity in the Court of Claims From January 19531 to = 1990 is

- -- -

No.-of No of

4 . N. * . pe y °

Ay Case Patents? Patents

. ; Held Valid

Gearon, et al. v. U.S., 129 Ct. @1. 315 (1954)... !

Bereslarsky v. U.S., 129-Ct, Cl. 427 (1954) _-.-

3. Davis Airfoils, Inc. v. U.S., 129 Ct: Cl. 514 (1954) _-

4. Alma Motor Co. v. U.S., 133 Ct. C1. 59 (1955). -

6 Alma Motor Co. v. U.S., 183 Ct. Cl. 91 (1955) __

ti. Badowskiv. U.S. (os Ct. Ch 93:(1958)..-.. 3

a Paeyv, CS., 135 C t. C1. 245 (1056). ? et

&.

Smith v. ULS., 136 Ct. C1487 (1956).

4, Zorolite Co., ctal.v. U S., 138 Ct. Cl. 114 (1957) ”

‘10.

15

$2.

13.

14.

15.

16.

Breese Burners, Inc. vy. U.S., 140 Ct. Cl. 9 (1957)... 2

Speeialtics Development Corporation v. U.S., 141 Ct. C1.

456,(1958)....... ae i ips

Chesterfield, v. U.S.," 141 Ct.-Cl. 838 (1958)... --

Falton v. ULS., eC t: CL.J21 (1958) _

Bullock, etal. ¥. ,146 Ct. €1. 506 (1959) . ioe s

Saulivier v. re Ms Ct. Cl. SDF (4960) <2. oe cs

Ace Fastener Corp. v. U.S., 149 Ct. TL. 555 (1960) _.

17. Erie Resistor Corp. v. U.S., 150 Ct. C1. 490 (1960)... -

1S.

19

20.

21.

Charlotte Chemical Lahoratories, Inc. v. U.S., 154.Ct.

C1. 283 (1961)... aes

. Corkwelly. U.S, 155 Ct. Cl. 193 (1961) ..2 neh

Regent Jack Manu facturing Co. Ine: 80.6.2 155 Ct:

Gl203 (1081)... BAe tise

Beaty, U-S., 787 Ct. Cl: 498 | Lose %

22. Ushakoff v. U.S., 164 Ct. Cl. 455 (od)

23. Adams v. U.S., 165 Ct. Cl. 576 (1964) _

24.

or

aw.

Calhoun v. U.S., 168 Ct. Cl. 663 (1964)

Straussicr v, U.S., 168 Ct. Cl. 852 (1964)... --..

26. Pratt & Whitney v. ULS., 170 Ct. Ch. 829 (1965)

28.

20

30.

32.

33.

34.

30.

36.

37.

. Kemode v. U.S., 171 Ct. Cl. 698 (1965). berag

Connecticut Valt WE nferpriece, Int. ¥. US. Pe Gt,

Cl. 468 (1965) =

. Haliczer v. U.S., 174 Ct. CL. 507 (1960)

THE FOLLOWING CASES WERE DECIDED’

VAP TER GRAHAM y. JOHN DEERE

Dwyer v..U.S,, 174 Ct C ‘1, 1064 (1966)... .-

. Yosemite v. U., S., 175 Ct. Cl. 623) (1966)...

Soundseriber v. _U.S., 175 Ct. Cl. 644 (1966)... ..-*

Stakenborg v. U.S., 178 Ct. C1. 738 (1967)

Blumcraftv. U.S., 178 Ct.Cl. 798 (1967). ..:

Martin- Marietta v. U.S., 179 Ct. Cl. FO (1967)

Autogirov. U,S., 81 Ct. Cl. 55 (19673

Eastern Rotocraft Corp. v. ULS., teCt. C1. 299 ( 1967)_.

B8, North Mlectricv. US,, 181 Ct. 1. 58 (1967) = >

39.

40.

Bowser, Inc. v. U.S., 181 Ct. Cl. 8384 ay

Van deen v. U.S.,-181 Ct. Cl. 884 (1967)

Le

1 1

1 1

1°

1 1

1

ae

1°: 1

ees 2

1 1

‘

-

1 1

1

| 1

e

1 !

a 1

{,

! }

1 y

= 1

~y

1

‘1

3 1

! ~%

1

1 1

i 1

1 1

1

Ae }

1 : 1

No. of

Patents

Hefd Invalid

€ % *

$ ‘ Fr ,

IAT r 4 ~ :

APPENDIX C~ Cont.

ee “ ;

ra + Adjudication of Patent Invalidity in the Court of Claims From ‘January 19531 to July 1970

2 y as — ; : .

‘ : . , No.of - No.of No. of

on, sad ; Patents? Patents Patents

‘ ; Held Valid) Held Tavalid

a2: Simm onda Dreciaion v. U.S., 183 Ct. Cl. 969 (1968) : 1 |

43. Eastern Rotocraftv. U.S., TS4 Ct. Cl. 709 (1968) . 2 Fi

44. Barrett v. ULS., 1s6 Ct. €1. 210 (196s) } !

45. Ellicott Machine v-U.S., 186 Ct. C1. 655 (1969) 5 1 a 6 i

48. Tripp v. U.S. 186 Ct. CL S72 ° ae toot ven

47. ‘Tri-Wall v. U.S,, 187 Ct. CI. 326 (1989) » eo as i

48. Nobssen v. U.S., 189 Ct. ©4,1-(1909). ; 1 1

gh. Decca vy, &S., 420 F. 2g 101970) | ; 5 3 = ets,

50. Garrett y. Los 922 F. 2d 874 (1970) et ; “og 2 ,

5L-Patmer v. U.Ss, 423 F. 2d 316 (1970) : ety 1 . a t t P

Total Pre-Graham ‘ Aer +33. Mm yn ee

Total Post-Graham ae Yeh 1s

; 1 January 1, 1053 was the effective date of the new Patent Act, 66 Stal. TUS. ;

2 Figures in thig ediumn represent the total number of patents in the case as to which the Court

rendered a decision holding one or more claims valid or invalid. : pe re

— ADIUDICATIONS BY CIRCUITS?

TABLE 1. All Circuits Courts of Appeals, 1953-1463

‘ Total No. — Valid and Invalid . Valid but not

, Year Reported of Patents Infringed + (percent) Infringed

: Adgudicated — (percent) : _ (percent)

ae. ee ee = bo 24,2 62.2 ° 13.6

1934 Al Oy ag ws

Cae on . 44 —— 18,2, 63.6 0 18,2

TOM oe a so - $2.5 oo = 1h. 2

1957 : ; 7 ya aa) 5.4

1058 oo 2600 6.7 6.7

1950. .- Pees Lj ee ‘ 70 25.7 57.17 7:9

. 1960 7 . he 30.7 a1. c Lie

1961. Dial Was : st) 45.8 ae ee 11.5

Seat 1982 620 40.3 ° 48.3 11.3

1963... ; P = 7 a6 28. t od. 2 15.8

" -Totakand Averages 734 20,0 at ae

: , *The following tables are: reproduced from Gausewitz, Brief in Sugporf of Pro

posed Amendment, Section 163, Title 35, Patents, US. Code, 91 do rnal. of, the

Patent Office Society, 20, 552 330 (May 1969).

-

.

Cireuit No.

-

Total and Averages. ~

79

TABLE 2. Courts of Appeals By Circuit.

%

Total No.

of Patents

* Adjudicated

Valid and

Infringed

(percent)

20. 4

14.4

om 6-9

43.6

29.0

Courts of Appeals cases decided subscquent to Graham vr. John Deere

ported in the US. Patent Quarterl ggprior to December 1, 1968

Circuit

Paténts

Adjudicated

Valid and

Infringed

(percent)

|

US een

Invalid

(percent)

Invalid

(pere

ent)

a as

S 3 SEAAAS

a a a a

i

wus

PF >

°

=

=

Valid but not

Infringed

(percent)

:

22. 5

12.2

oo pe me eee ae

11.3

‘715.9

e 12.9

2

‘16.8

13.3

12.5

4.7

40.0

-

13.6

—s

(Fehruary 21, 196+) and re-

Valid bu

t

*

tnot

Infringed

(percent)

>

Valid, but

Infringement

Issue not yet

Decided

(percent)

MENT PRINTING OFFICE '1970 Q--403-560

*