# Opposition Brief — Majuri v. United States > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385605_0349%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Opposition Brief - **Published:** January 1, 1970 - **Citation:** 400 U.S. 943 ## Text se . 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 * . - 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 * . - 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 ). 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 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) 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 * --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385605_0349%3A2. Public record. Not legal advice.