Petition for Writ of Certiorari — Safe Flight Instrument Corp. v. McDonnell Douglas Corp.

Supreme Court brief1973

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FILED

LIBRARY — OcT 19 1973

SUPR ei air COURT,

WICHREL HOURK, Jn.,CLER

IN THE ¥

Supreme Court of the United States

OctToBER TERM, 1973

No.7 -674 1

SAFE FLIGHT INSTRUMENT CORPORATION,

a New York corporation,

Rife tae Ae eee .

Petitioner,

THe GOR NUR t REBT ID ess

Vv.

McDONNELL DOUGLAS CORPORATION, a Mary-

land corporation, and SPERRY RAND CORPORA-

TION, a Delaware corporation,

BI EP RE

Respondents.

PETITION FOR CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Tuomas M. MARSHALL,

Counsel for Petitioner,

111 East 38th Street,

New York, New York 10016

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PRE RES PIONS AH AP YP es

TABLE OF CONTENTS

, PAGE

Opinions Below ........ceecscccvccsscsvvececes 1

Jurisdiction ...cccccscccccccccvevcceceveseseees 2

Questions Presented .........seeeeeeeereveeveece 2

Constitutional Provisions and Statutes Involved .... 4

Statement of the Case ......ecscccccccccccvveces 4

Argument and Reasons for Granting the Writ As to

Questions 1 through 4 ...... eee eee reece eens

Argument and Reasons for Granting the Writ As to

the Fifth Question ..... seen eee e eee ee eeneees 13

SSD LOOPS EO CETETT EET TET ET COOL UTE OTT 16

TABLE OF CASES AND AUTHORITIES

Anderson’s Black-Rock, Inc. v. Pavement Salvage Co.,

396 U. S. $7 (IGG) 2. ccccsccsccsesesvvcceces

Blonder-Tongue Laboratories, Inc. v. University of

Illinois Foundation, 402 U. S. 313 (1971) ....2, 3, 6, 9,

10, 11, 13, 14, 16

Ceramic Tilers Supply, Inc. v. Tile Council of America,

378 F. 2d (Sth Cir.) ..ccccccsccecescvescevens

Graham v. John Deere, 383 U. S. 1 (1966) ........ 14

Great Atlantic & Pacific Tea Co. v. Supermarket

Equipment Corp., 340 U. S. 147 (1950) ......++ 15

Reeves Instrument et. al. v. Beckman Instruments,

Inc., 444 F. 2d 263 (9th Cir. 1971) .......-- 14, 15, 16

Regimbal et. al. v. Scymansky et. al., 444 F. 2d 333

(Oth Cir, 1971) ....cccceeeeeeeecerereeeceens 15

Ritchie v. Lewis-Broadway Mfg. Co., 196 F. 2d 434,

436-437 (Sth Cir, 1952) 0... . eee e eee eee eeee

Triplett v. Lowell, 297 U. S. 638 (1936) ......- 3, 5, 6, 13

See Wome oy. | |) ar errnrr retry reer 2

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2 Soe |. rrr rT reer reer 4,11, 16

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Article 1, Section 8, Clause 8, U. S. Constitution ... 4

aA ae Rem

be aati a 4 EDP ORE ENTE ES Ne

‘

IN THE

Supreme Court of the United States

OctTosBer TERM, 1973

No. 73-

"*“

SAFE FLIGHT INSTRUMENT CORPORATION,

a New York corporation,

Petitioner,

McDonnELL DouGLas Corporation, a Maryland corpo-

ration, and SPERRY RAND CorRPORATION, a Delaware

corporation, - rae

espondents,

PETITION FOR CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Petitioner respectfully prays that a Writ of Certiorari

to review the Judgment entered on April 27, 1973, by the

United States Court of Appeals for the Ninth Circuit.

OPINIONS BELOW

The Opinion of the Court of Appeals for the Ninth

Circuit in this case is unreported in the Official Reports,

but is reported at 178 U. S. P. Q. 13 and its Opinion is at-

tached hereto, beginning at A2. The Opinion of the Dis-

trict Court for the Central District of California is unre-

ported in the Federal Supplement, but is reported at 169

SPOON RNET & 2 Aaa

U. S. P. Q. 328 (A17). There was never a formal Opinion

in the District Court and the Appendix items which are

attached as Al8 through A39, is a reproduction of the

Findings of Fact and Conclusions of Law entered along

with the Judgment and a Memorandum to Counsel, dated

October 15, 1970 (A40). In addition there is attached a

decision on the same patent; constituting the Findings of

Fact, Conclusions of Law and Final Judgment of the

United States District Court for the Western District of

Washington, dated respectively December 11, 1968 (A47)

and July 31, 1969 (A56).

JURISDICTION

The Judgment of the Court of Appeals filed April 27,

1973, was the subject of a timely Petition for Rehearing

and that Petition for Rehearing was denied by Order of the

Court filed September 13, 1972 (A15). An Order Staying

Issuance of the Mandate has been entered, provided this

Petition be filed on or before October 20, 1973 (A16). This

Petition is being filed by October 20, 1973. The jurisdic-

tion of this Court is invoked under 28 U. S. C. § 1254(1).

QUESTIONS PRESENTED

1. Under the principles and the rationale of this Court

in Blonder-Tongue Laboratories, Inc. v. University of

Illinois Foundation, 402 U. S. 313 (“Blonder’’), should a

Final Judgment of validity of U. S. Patent No. 3,043,540

be determinative as to subsequent proceedings on the same

issues involving the same patent ?

: 2. Under the circumstances of this case in which

: Respondent McDonnell Douglas Corporation (hereinafter

ae eS MOF Y tite i eee ee held Ch eee See a er

Se a Ba Ae Sa Su Ber

AA Ta OR, A ee LL

MDC) fostered infringement by two separate infringers

and participated to some extent in the first action (which

resulted in a Final Judgment of the validity and infringe-

ment of U. S. Patent No. 3,043,540, hereinafter ’540),

should the principles of Blonder apply to preclude a reliti-

gation of the issue of validity at all, or, at least to the ex-

tent that the same evidence is relied upon in the subsequent

proceeding?

3. Is it a denial of due process for the U. S. Court of

Appeals for the Ninth Circuit to refuse to remand a case

to the lower Court, for purpose of holding a hearing with

respect to the matter of raising and deciding the issue of

collateral estoppel, when this Court, by overruling Trip-

lett v. Lowell, 297 U. S. 638 (“Triplett”), drastically

altered the law with regard to the effect to be accorded

prior proceedings involving the same patent after the

second trial and Judgment but before the decision by the

Ninth Circuit?

4. Where this Court, in a major reversal with regard

to the requirement of mutuality for collateral estoppel in

patent cases, directs that the Court in second litigation must

decide in a principled way whether or not it is just and

equitable to allow a plea of estoppel in the case before it

at a time, after the Final Judgment in the District Court

and pending the briefing and hearing of the case in the

Court of Appeals, should not justice and equity require the

Court of Appeals to remand the case to the District Court

for the kind and quality of a hearing as described in Blonder

at pp. 332-334?

5. Should the Ninth Circuit Court of Appeals be re-

quired to maintain a uniformity of decisions within the

District Courts of its own Circuit where the identical patent

2) Sew sae. a ne Fons Ss:

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has been subject of two (2) identical trials and two (2)

directly opposing decisions with regard to the matter of

validity on the identical evidence, particularly where the

decisions of the Ninth Circuit manifestly show lack of

uniformity ?

CONSTITUTIONAL PROVISIONS AND STATUTES

INVOLVED

This case involves Article I, Section 8, Clause 8 of the

Constitution (A1) ; Section 103 of the Patent Act of 1952,

35 U. S. C. § 103 (Al); and Section 282 of that Patent

Act, 35 U. S. C. § 282(A1).

STATEMENT OF THE CASE

Petitioner in this action brought suit in July 1967 in

the United States District Court for the Western District

of Washington involving the patent here in suit (and two

(2) other patents, which are no longer relevant to these

proceedings ). That case, in the Western District of Wash-

ington (Seattle case) involved as defendants, United Con-

trol Corporation and its successor UC Liquidating Corpo-

ration, collectively referred to herein as UCC. That suit,

as acknowledged by the Ninth Circuit Court of Appeals,

related to actions by UCC in contracting for the manu-

facture of aircraft devices covered by the Petitioner's '540

patent for installation in McDonnell Douglas Corporation’s

(hereinafter MDC) model DC-9 aircraft. In connection

with the manufacture and sale of those devices, UCC agreed

to indemnify MDC for any damages MDC might be re-

quired to pay for patent infringement. After a lengthy

trial, the District Court in that Seattle case entered its own

Findings of Fact, Conclusions of Law and a Judgment, to

the effect that the '540 patent was valid and that the same

7” iad were POEL ANE RP DNV ALE PE hs PI TTS MOEN -

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claims involved in the instant litigation were infringed by

the defendants in that case (A47). A Judgment for Peti-

tioner, consistent with these determinations was entered on

December 11, 1968. There was an Appeal to the Ninth

Circuit Court of Appeals. Subsequently, Petitioner re-

quested that the Appeals be remanded to the Seattle Court,

in order to enable Petitioner’s Motion for a New Trial and

Other Relief to be heard. The Ninth Circuit, on May 27,

1969, in an unreported Order, granted the requested re-

mand. On July 31, 1969, an Agreement was entered into

between the parties settling all issues in the Seattle case.

Part of that Agreement was that a Final Judgment (A56)

be entered with regard to the validity of the '540 patent,

thus affirming the Seattle Court’s final decision in that

regard. The then pending Appeals to the Ninth Circuit

were dismissed.

In the meantime, the instant litigation (Los Angeles

case) was initiated on December 30, 1968, That involved

MDC and Sperry Rand Corporation (hereinafter Sperry )

with regard to a separate aircraft instrument which, at

that time, was being procured by MDC from Sperry against

a performance specification for MDC DC-10 aircraft which

called for infringement of Petitioner’s ’540 patent.

Operating under the strictures of this Court in the

Triplett case, supra, plaintiff conceded that MDC and, in

turn its new privy Sperry, were entitled to their day in

Court with respect to the validity of the 540 patent. In

the numerous Counts which are the subject of the Amended

Complaint, and hence the issues which were tried, Counts

One and Two involved jointly MDC and Sperry with

regard to the specific matter of the infringement by MDC

and Sperry of the device being procured for MDC’s model

DC-10 aircraft. Count Three was against MDC alone for

having procured, used and resold the UCC devices which

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had already been the subject of a Final Judgment against

UCC. Petitioner conceded, under the law as it then existed,

that both MDC, with respect to Count Three, and Sperry

and MDC with respect to Counts One and Two, were

entitled to their full day in Court.

Accordingly, there was a trial, truncated, split up and

very confusing to counsel and the Court, of the issues with

respect to Counts One and Two of the Complaint in the

instant action. Following the trial in that case, the Court

prepared a Memorandum to Counsel (A40-46) and follow-

ing oral argument eventually entered the Defendant’s

Second Amended Proposed Findings of Fact and Conclu-

sions of Law in the form as indicated in Appendix A18-37.

The Final Judgment (A38) in the instant litigation

was entered on March 4, 1971.

Thereafter, and while this case was on Appeal to the

Ninth Circuit Court of Appeals, this Court decided the

Blonder case, supra. As a part of the Appeal proceeding,

Petitioner attempted to raise the principle of the Blonder

case as a basis for requesting the U. S. Court of Appeals

for the Ninth Circuit to remand the case to the District

Court for a hearing of the type described by this Court in

Blonder at pp. 332-334, supra.

Part of the purpose of raising that issue on the Court

of Appeals had to do with the fact that Petitioner had filed

a Cross Motion for Summary Judgment, following a

Motion by MDC for a Partial Summary Judgment on

Count Three of the Amended Complaint in this action. In

view of then existing law, under this Court’s decision in

Triplett, supra, Petitioner felt that there was no choice, as

long as MDC insisted on its day in Court, but that Peti-

tioner accept that MDC was entitled to a separate trial,

until such time as MDC elected to take the benefits of the

Final Judgment rendered against its indemnitor UCC.

a BC RSRAIE Ape

Thus, during the Appeal Petitioner raised, and sought to

have decided, the matter of MDC’s being bound by the

decision of validity and infringement with respect to Count

Three, i.e., the action by Petitioner against MDC alone

for its procurement of the UCC devices. Petitioner’s

Motion was denied by the Los Angeles Court and that

denial was affirmed by the U. 5. Court of Appeals for the

Ninth Circuit. Part of the reason for the denial by the

Ninth Circuit was that Petitioner had not raised, and

therefore had not preserved the collateral estoppel issue in

the District Court. A further reason, as indicated in the

footnote at All, was that the full record of the Seattle case

was not before either the Los Angeles Court or the Court

of Appeals.

The Ninth Circuit remanded the case for further pro-

ceeding in respect to Count Three (the Complaint by

Petitioner against MDC alone for procurement of vCcO

infringing devices) and the other Counts which relate to

unfair competition, which remain pending and undecided

by the Los Angeles Court.

Petitioner thus finds itself in the position that with

respect to UCC and the devices which it manufactured and

sold to MDC, the ’540 patent is valid and infringed and

further proceedings involving MDC are directed with

respect to those matters. However, with regard to MDC

and Sperry and devices procured for the model DC-10

aircraft, the patent, in a separate decision by the Los

Angeles Court, is invalid and not infringed. There is thus

within the same Circuit, two directly conflicting decisions

by two separate District Courts which, on the same evi-

dence, come to exactly the opposite conclusions.

These matters were brought to the attention of the

Ninth Circuit Court of Appeals and that Court has, in the

Pan

following language, declined to deal with that specific

problem:

“We decline to approach the problem in this way.

It is true, as defendants concede, that prior adjudica-

tions as to validity of a patent ‘are entitled to

respectful consideration and in doubtful cases they

are strongly persuasive.’ Ritchie v. Lewis-Browning

Mfg. Co., 196 F. 2d 434, 436-437 (5th Cir. 1952).

It was on this theory that the district court, in the

case before us, admitted in evidence the judgment,

findings of fact and conclusions of law entered in the

Seattle case. We have no reason to believe that the

district court in our action failed to accord these

records of the Seattle case the weight to which they

are entitled.°

“But the respect which should be accorded prior

adjudications as to validity of a patent does not,

absent estoppel running against the parties to the

prior litigation, supplant the primary duty of a court

to dispose of cases according to the law and the facts

of the particular case before it.”

See Ritchie, supra, at 437.

“Our function on appeal is consonant with this

view. Moreover, it would not be practicable for us

to enter into an appraisal of the relative soundness

of the two sets of findings. The record of the

Seattle case is not before us. The parties have

argued pro and con as to the differences between the

5At the outset of the present trial, the district court announced

that if it had a strong view concerning the validity of the patent,

it would not be influenced by the finding as to validity in the

Seattle case, but that if the court found the issue to be in doubt,

the Seattle findings “would constitute make-weight.”

ANE A Ar RO

evidence in the two records, but we have no basis

for evaluating their differing appraisals . . Pid

(A7-8).

Petitioner had specifically raised this issue, as acknowl-

edged by the Ninth Circuit, in the following language:

“At the outset of its argument concerning these

findings of fact, Safe Flight observes that the

questioned findings are ‘completely inconsistent and

directly contrary’ to the findings entered in the

Seattle case, and postures the problem as one of

determining which of the two sets of findings are

clearly erroneous under Rule 52(a), F. R. Civ. ag

(A7).

Both of the District Courts below had jurisdiction of

the case pursuant to the Patent Laws of the United States,

Act of July 19, 1952, Ch. 950, 6 Stat 792 et seq.; Title

35 U. S. Code, § 1, et seq., more particularly 35 U.S. C.

§§ 271, 381; and 28 U. S. C. §1338(a). The Court of

Appeals had jurisdiction pursuant to 28 U. S.C. § 1291.

ARGUMENT AND REASONS FOR GRANTING THE WRIT

AS TO QUESTIONS 1 THROUGH 4

This Court, in the Blonder, supra, case has announced

important changes in the law with regard to the treatment

to be accorded to previously tried patent cases. It has

decided that where a patentee has had a full and fair op-

portunity to obtain a determination of the validity of his ;

patent in a previous proceeding, that, unless certain re-

quirements are met, the patentee is subject to the doctrine

of collateral estoppel and a separate infringer, in a sub-

sequent case, may plead collateral estoppel as a bar.

This case presents the exact inverse of the decision in

Blonder. These questions have not been decided by this q

Court but constitute a vitally important area of the law

which is totally unsettled. In some case in the near future

this Court will have to deal with the other edge of

Blonder’s “sword”. Taking the language from Blonder and

changing only the word “invalidity” to “validity”, the fol-

lowing would appear.

“First assuming that a perfectly sound judgment

of validity [invalidity] has been rendered in an

earlier suit involving the patentee, a second in-

fringement action raising the same issue and in-

volving much of the same proof has a high cost to

the individual parties. The patentee is expending

funds on litigation to protect a patent which is, by

hypothesis, valid [invalid]. These monies could be

put to better use, such as further research and de-

velopment. The alleged infringer—operating as he

must against the presumption of validity—is forced

to divert substantial funds for litigation that is

wasteful.” Blonder-Tongue, supra, 91 Sup. Ct.

1434, 1447.

The word “invalidity” has been changed to “validity”

but neither reason nor equity or justice would make it ap-

pear why the principles which constitute the basis for the

Blonder decision, should not apply with the same force and

effect that the “sword” of Blonder can be used by a sub-

sequent infringer against the patentee whose previous trial

has met all of the requirements laid down by the Blonder

decision.

This is particularly applicable in the circumstances of

this case, where the same party, i.e, MDC, procured the

separate infringements, first by UCC and then subsequently

by Sperry. It is more relevant even in the situation here

where both District Courts decided the validity of the ’540

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patent pursuant to 35 U. S.C. § 102 and § 103, relying on

the identical evidence.

It is respectfully submitted that unless there is a prej-

udice against patents, the Courts, including this Court and

the Ninth Circuit Court of Appeals and other Courts of

Appeal, should not be permitted to subject a patentee to

multiple trials where his patent has been held valid, until

some Court, prejudiced though it may be against patents,

concludes that the patent is invalid. Under the law, follow-

ing the Blonder decision, a patentee, in effect, has only one

chance if his patent is held invalid. On the other hand,

a patentee is subject to any number of subsequent infring-

ers, any one of which may be lucky enough to find a Court

who will, whether on the same evidence or additional evi-

dence, conclude that the patent ‘s invalid. It is not the thrust

of this Petition to attempt to argue the other set of cir-

cumstances in which substantial new evidence, either with

respect to the issue of validity or a substantially different

infringement, is to be precluded by a prior determination

of validity and infringement. But at least as to the issue

of validity, where the evidence is demonstrably identical

the patentee, under the principles and for the same reasons

and logic given in Blonder should not be subject to a sepa-

rate and a new trial, or a series of trials, until such time

as a Court is ultimately persuaded, for whatever reasons,

whether it be prejudice or otherwise, to rule that the patent

is invalid.

Thus the questions presented in Questions 1 through 4

above, raise a very important issue if the patent system is

to remain viable. Unless patentees are to be treated as

separate and apart from the rationale and principles in

Blonder when their patents have been held valid, then there

‘s no reason why Blonder’s decision, as long as all of the

carefully laid out requirements are met, should not be fully

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as applicable to a previous decision after a full and complete

trial with regard to the issue of validity and, in any cir-

cumstance, at least relitigation of that issue should be pre-

cluded, absent a cogent showing of new evidence or a show-

ing of the failure, of the first Court to decide the issue, to

fully and completely comprehend the subject matter of the

patent involved.

Much of the progress of this Country, and its techno-

logical position, is based on the patent system as it has

functioned. Many of the decisions of this Court and of

Courts of Appeal and District Courts have gone a long

way to undermine the effectiveness of this Country’s ability

to compete with foreign countries having lesser patent

standards. Citation to adverse comments by Justices of the

Supreme Court and by other Judges could be cited as

authority for the above proposition. It seems that whereas

there is a statutory presumption of validity, 35 U. S. C.

§ 282, there is a judicial presumption of invalidity. This

may be understandable, when the conflict between the Anti-

Trust Laws of the United States and the Patent Laws

come into play. However, where a patentee has, in a com-

plete trial, had presented against him the most cogent evi-

dence and has obtained a determination which is final, that

the patent involved is valid, it seems most inequitable now

to subject that same patentee to multiple trials, until some

other infringer is able to persuade some other Court to hold

that patent invalid.

For all of the reasons given above, it is of paramount

public importance to patentees and to companies who are

assignees of patentees, that their contributions to the ad-

vance and progress of the useful arts be protected against

multiple trials, in the same manner that infringers are pro-

tected against multiple trials by patentees who have, in a

full and fair trial, had their patents declared invalid.

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ARGUMENT AND REASONS FOR GRANTING

THE WRIT AS TO THE FIFTH QUESTION

To some extent the reasons for granting the Writ with

respect to this question are identical with those offered

above. Clearly this matter was raised in the Court of Ap-

peals and the Court of Appeals directly declined to consider

it. Any reasonable comparison between the Findings of

Fact and Conclusions of Law entered by the Seattle Court

and the Los Angeles Court, clearly shows the direct con-

tradiction between the two cases, as it regards the validity

of the 540 patent in suit.

It should be remembered that the case in Los Angeles

was tried during the period of the time when Triplett, supra

was the law of the land. It was therefore not unreasonable

for the Petitioner not to have raised or preserved the argu-

ment of collateral estoppel during that trial and the argu-

ment of the various Motions, including the Cross Motion

for Summary Judgment made by Petitioner against MDC,

previous to the trial of this action.

However, it amounts to a deprivation of due process

of law for the Court of Appeals to refuse to Remand this

case to the District Court for further proceedings, in ac-

cordance with the principles announced in Blonder, when

the Blonder decision was decided after the entry of Final

Judgment by the Los Angeles Court. Thus, the District

Court in Los Angeles felt impelled to decide this case com-

pletely on its own with no or little reference other than

“make weight”, to the decision by the Seattle Court. In

view of that circumstance, it is not surprising that the

whole record of the Seattle case was not introduced and ar-

gument was not had with regard to the matter of MDC’s

(and its new privy, Sperry) being collaterally estopped to

assert invalidity of the 540 patent on the same evidence.

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However, when this Court decided that mutuality was no

longer a requirement in Blonder, after the Final Judgment

in the Los Angeles case was entered, the least that the Court

of Appeals should have done was to return the case to the

Los Angeles Court for the kind of hearing that is prescribed

in the Blonder decision.

Petitioner respectfully submits to this Court that had

the Court of Appeals followed that procedure, which it had

ample precedent to do as shown by Ceramic Tilers Supply,

Inc. v. Tile Council of America, 378 F. 2d (9th Cir. 1967)

a contrary result would have prevailed. Thus, in that case,

as well as the other cases in other Circuits, for which

citation is not required, following this Court’s ruling in

Graham v. John Deere, 383 U.S. 1 (1966), the Ninth Cir-

cuit and other Circuit Courts returned cases to the District

Courts for rulings in light of the Graham decision.

Here there can be no question that Blonder fundamen-

tally changed the law and the rights of parties to patent

litigation. The Ninth Circuit Court should have returned

the case to the Los Angeles Court with permission for Peti-

tioner to file the complete record of the Seattle case and to

obtain the kind of hearing and the kind of determination as

prescribed in the Blonder decision. Only then would the

Court of Appeals and subsequently this Court, have before

it the basis on which to fully rule with regard to the validity,

once and for all, of the 540 patent which is here in suit.

It is curious enough that the Court of Appeals has per-

mitted the current situation in which the ’540 patent is valid

and infringed with respect to a Final Judgment in the

Seattle case and invalid and non-infringed with regard to a

Final Judgment in the Los Angeles Court. But, beyond

that, the Ninth Circuit Court of Appeals is often inconsis-

tent in its rulings in applying the Graham case. Compare

Reeves Instrument v. Beckman Instruments, Inc., 444 F. 2d

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263 (9th Cir. 1971) with Regimbal et. al. v. Scymansky et.

al., 444 F. 2d 333 (9th Cir. 1971). As has been stated by

the authors in Patent Law Perspectives 1971 Developments,

Section Al(1), at pp. 37-42:

“One of the finest judicial treatments of the law

of nonobviousness ever written, in our opinion,

appeared in Reeves Instrument Corp. v. Beckman

Instruments, Inc. wherein the Ninth Circuit affirmed

the trial court’s holding of validity. One week

earlier, a different ‘Ninth Circuit panel wrote about -

the worst opinion ever written on nonobviousness in

Regimbal v. Scymansky in which the lower court’s

holding of invalidity was affirmed with reasoning

which itself demonstrated its own illogic and untu-

tored conceptions. The two cases jointly show the

schizophrenic dichotomy in patent law which Ander-

son’s Black-Rock blithely encouraged, i.e., the mutual

application of the doctrine that inventions are pat-

entable when nonobvious and the doctrine that com-

bination-of-known-elements type inventions are pat-

entable (or are inventions) only when they are

super-nonobvious (or only when they are inven-

tions ).”

The above quotation shows that depending upon the

panel that one obtains in the Ninth Circuit, when a combi-

nation of known elements of a patent is involved, on the one

hand the Ninth Circuit properly interprets the Anderson’s

Black-Rock’ decision of this Court, along with the A & P?

doctrine, but in other cases require that combination of

1Anderson’s Black-Rock, Inc. v. Pavement Salvage Co., 396

U. S. 57 (1969).

*Great Atlantic & Pacific Tea Co. v. Supermarket Equipment

Corp., 340 U. S. 147 (1950).

known elements type of inventions are patentable only if

they are super-nonobvious.

One of the other clear errors of law by the Court of

Appeals and by the Los Angeles District Court, is to stress

improperly a single element of the combination as opposed

to the combination as a whole (35 U. S. C. § 103) in this

case whereas that issue has properly been interpreted in the

Reeves Instrument case, supra.

In order that there be uniformity of decision within the

Ninth Circuit of the two District Courts which have ruled

on the ’540 patent’s validity, and, in order that there be

some uniformity with regard to the rulings of law on

validity of combination of known elements type of patents

in the Ninth Circuit, this Court ought to grant the Writ

and to resolve this important conflict.

CONCLUSION

For the reasons stated above and to resolve the impor-

tant questions left unanswered by this Court’s decision in

Blonder, this Petition for Certiorari to the U. S. Court of

Appeals for the Ninth Circuit should be granted.

Respectfully submitted,

Tuomas M. MarsHALL,

111 East 38th Street,

New York, New York 10016

Counsel for Petitioner.

IN THE

Supreme Court of the United States

Octoper Term, 1973

No, 73-

SAFE FLIGHT INSTRUMENT CORPORATION,

a New York corporation,

Petitioner,

Vv.

McDONNELL DOUGLAS CORPORATION, a Mary-

land corporation, and SPERRY RAND CORPORA-

TION, a Delaware corporation,

Respondents.

APPENDIX TO PETITION FOR

A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Tuomas M. MARSHALL,

Counsel for Petitioner,

111 East 38th Street,

New York, New York 10016

‘

RR a a0 es

INDEX TO APPENDIX

PAGE

Constitutional and Statutory Provisions .......... Al

Decision by U. S. Court of Appeals for the Ninth

Circuit, Sled Aoril 27, 1975 2. scccscccsssesees A2

Order Denying Petition for Rehearing dated, Septem-

ae rere tc es Shad alee soma wa ns Al5

Order Staying Issuance of Mandate, filed September

BE tan cake nua cdakeeeek come Coke Gs Al6

Findings of Fact and Conclusions of Law, entered

March 4, 1971 by U. S. District Court for the

Central District of California, Judgment and

Memorandum to Counsel, dated October 15, 1970 . A17

Findings of Fact and Conclusions of Law, entered

on December 11, 1968 by U. S. District Court for

the Western District of Washington, Western

RN aks Cen aceucwek corre acts tise oese A47

Final Judgment entered on July 31, 1969 by U. S.

District Court for the Western District of Wash-

ington, Northern Division ............22.ss: A56

A pe tire oe ED

OTRAS SRT NOTE DIMA AREY SAS ON aS OTR RULE TY Sete tae

CONSTITUTIONAL AND STATUTORY PROVISIONS

Constitution

Article 1, Section 8, Clause 8. Patents and copyrights

‘To promote the Progress of Science and useful Arts,

by securing for limited Times to Authors and Inventors the

exclusive Right to their respective Writings and Dis-

coveries ;”

Patent Laws

“§ 103. Conditions for patentability; non-obvious subject

matter

A patent may not be obtained though the invention is

not identically disclosed or described as set forth in section

102 of this title, if the differences between the subject

matter sought to be patented and the prior art are such that

the subject matter as a whole would have been obvious at

the time the invention was made to a person having ordinary

skill in the art to which said subject matter pertains.

Patentability shall not be negatived by the manner in which

the invention was made.”

“$282. Presumption of validity ; defenses

A patent shall be presumed valid. Each claim of a patent

(whether in independent or dependent form) shall be pre-

sumed valid independently of the validity of other claims;

dependent claims shall be presumed valid even though de-

pendent upon an invalid claim. The burden of establishing

invalidity of a patent or any claim thereof shall rest on the

party asserting it...”.

pom om PONE Emmet racy

In THE

UNITED STATES COURT OF APPEALS

For THE NINTH CIRCUIT

Filed April 27, 1973

Dennis R. MaTHEws, Clerk

U. S. Court of Appeals

SAFE FLIGHT INSTRUMENT CORPORATION,

a New York corporation,

Plaintiff-A ppellant,

McDoNnNELL-DouGLas CoRPORATION, a No. 71-1751

Maryland corporation, and Sperry

RAND CorporRATION, a Delaware cor-

poration,

Defendants-A ppellees.

APPEAL FROM THE UNITED STATES District Court

FOR THE CENTRAL DISTRICT OF CALIFORNIA

Before: CHAMBERS, HAMLEY and WALLACE, Circuit

Judges

HAMLEY, Circuit Judge:

Safe Flight Instrument Corporation (Safe Flight)

brought this patent infringement action in the United States

District Court for the Central District of California on

December 31, 1968. In a six-count amended complaint

Safe Flight charged defendants, McDonnell-Douglas Cor-

poration (MDC) and Sperry Rand Corporation (Sperry),

with infringement of Safe Flight’s U. S. Letters Patent

No. 3,043,540 (’540 patent), and with the improper use ot

trade secrets.

The 540 patent is entitled “Aircraft Instruments” and

describes a closed-loop aircraft instrument system intended

to assist the pilot of a jet aircraft in take-off and other flight

maneuvers such as landing approach and go-round. The

subject matter of the 540 patent claims in suit is in com-

mercial practice by Safe Flight in a Speed Command and

Automatic Throttle System (SCAT), manufactured and

sold by Safe Flight. The patent was issued to Safe Flight

on July 10, 1962, as assignee of Leonard M. Greene.

The infringement claims are set forth in counts one, two

and three of Safe Flight’s amended complaint. In count

one, Safe Flight alleged. that MDC and Sperry have in-:

fringed, and will continue to infringe, the 540 patent in

connection with the manufacture and sale of an Automatic

Throttle/Speed Control System (AT/SC) for installation

on MDC’s model DC-10 aircraft. In count two, Safe Flight

alleged that MDC and Sperry have infringed, and will con-

tinue to infringe, that patent in connection with the manu-

facture and sale of devices comparable to AT/SC for use

on aircraft manufactured by MDC other than model DC-10.

In count three, Safe Flight alleged that MDC (but not

Sperry) has infringed, and will continue to infringe, the

’540 patent by making, using and selling products embody-

ing the patented invention on MDC model DC-9 aircraft

and other aircraft.’

Defendants asserted various defenses, including that of

patent invalidity. MDC moved for a partial summary judg-

ment dismissing count three of the amended complaint. Safe

Flight countered with cross-motions for partial summary

judgment against MDC on the third count. Both motions

were denied.

After a lengthy trial limited to the validity of the ’540

patent and infringement of that patent by the Sperry

AT/SC system, the district court entered a judgment de-

claring invalid all of the ’540 patent claims in issue. In

addition, the district court adjudged that Sperry’s AT/SC

_1The claims of the ’540 patent which Safe Flight alleged were

being infringed are claims 1-8, 17, 19, 20, 22 and 26.

system did not infringe the ’540 patent even if that patent

were valid. Safe Flight appeals.’

We will first consider issues pertaining specifically to

counts one and two. The first such issue is whether MDC

and Sperry are collaterally estopped from contesting the

validity of the ’540 patent.

In July, 1967, Safe Flight instituted a patent infringe-

ment suit, involving the 540 patent, and other patents, in

the United States District Court for the Western District

of Washington (Seattle case).° The defendants were

United Control Corporation and its successor U. C. Liqui-

dating Corporation, collectively referred to herein as UCC.

That suit was the outgrowth of UCC’s action in con-

tracting to manufacture its so-called Speed Command Com-

puters of the angle of attack type, for installation in MDC’s

model DC-9 aircraft. In connection with the manufacture

and sale of these devices, UCC agreed to indemnify MDC

for any damages MDC might be required to pay for patent

infringement. Safe Flight alleged, in the Seattle case, that

the UCC devices infringed the 540 patent.

After a lengthy trial in the Seattle case, the district

court in that case entered findings of fact and conclusions of

law to the effect that the ’540 patent is valid and claims 1

through 8, 17, 19, 20, 22 and 26 of that patent had been

infringed by the defendants in that case. A judgment for

Safe Flight, consistent with these determinations, was

entered on December 11, 1968, and UCC and U. C. Liqui-

*The judgment contains the express determination and direction

which, under Rule 54(b), F. R. Civ. P., in the absence of abuse of

discretion, confers jurisdiction upon this court to entertain an inter-

locutory appeal. See Zangardi v. Tobriner, 330 F. 2d 224 (D. C.

Cir. 1964). Appellees do not assert that there has been an abuse

of discretion in entering the Rule 54(b) recital, nor do we find

such an abuse.

3That suit is entitled Safe Flight Instrument Corporation v. United

Control Corporation, et al., Civil Action No. 7268.

hd Disreate a eolad anit

a ™ wf

A LEO ea Nat Pee MARUI SN Mtn

dating Corporation appealed. The appeals were docketed

in this court as Nos. 23,746 and 23,867.

Safe Flight thereafter requested that the appeals in the

Seattle case be remanded to the district court to enable that

court to entertain Safe Flight’s motion for a new trial

and for other relief. On May 27, 1969, in an unreported

order, this court granted the requested remand. On July

31, 1969, Safe Flight entered into an agreement with UCC

settling all issues in the Seattle case. Under the terms

of this agreement UCC paid Safe Flight the sum of

$2,509,922.19, and, by consent, a final judgment was en-

tered, one provision of which determined that the ’540

patent is valid. The appeals in Nos. 23,746 and 23,867 were

thereafter dismissed.

During the trial, Safe Flight did not contend that MDC

and Sperry, in defending against counts one and two of the

amended complaint, were collaterally estopped to challenge

the validity of the 540 patent because of the adjudication

of the validity of that patent in the Seattle case. At the

outset of this case Safe Flight contended, at most, that the

adjudication of validity in the Seattle case was entitled to

“great weight” in the absence of convincing new evidence

of invalidity. Accordingly, the pre-trial order of March

30, 1970, does not refer to any collateral estoppel issue.

As a matter of fact, during the pre-trial argument

bearing on the cross-motion for summary judgment on

count three, counsel for Safe Flight stated that had MDC

not, by its motion for partial summary judgment, elected

to accept benefits under the settlement agreement and judg-

ment entered in the Seattle case, “they [MDC] could have

remained solid and taken the position that nothing in Seattle

affects them in any way .. . and they are entitled to their

full day in court.” Likewise, at the same hearing, counsel

for Safe Flight conceded that “Sperry Rand has not had

its day in court.”

—A6

As recited in the judgment herein, the only issues tried

were with regard to the validity of the 540 patent and

whether that patent had been infringed by Sperry’s AT/SC

device. It is true that, in its cross-motion for partial

summary judgment, Safe Flight contended that MDC was

collaterally estopped by the judgment in the Seattle case.

But that motion pertains only to count three of the amended

complaint, to be dealt with below. The pre-trial order

clearly provides for the separation of those matters per-

taining peculiarly to counts three, four, five and six. Safe

Flight did not raise collateral estoppel as to counts one

and two during the proceedings in the district court. The

court’s findings of fact and conclusions of law made no

reference to a collateral estoppel issue.

Even on this appeal, Safe Flight, in its opening brief,

after referring to Blonder-Tongue Laboratories, Inc. v.

University of Illinois Foundation, 402 U. S. 313 (1971),

decided after the entry of judgment in this case, con-

tended only that because of the judgment in the Seattle case,

the ’540 patent was entitled not only to the usual pre-

sumption of validity, “but also to the further strength-

ened presumption of validity after a considered decision”

in the Seattle case.*

In its reply brief on this appeal, Safe Flight began to

harden its position concering the asserted binding effect of

the Seattle judgment insofar as counts one and two are

concerned, until it finally asserted that MDC “and its privy,

Sperry” should be bound by the outcome of the Seattle

case. It was not until the oral agrument before us that

Safe Flight began to talk about “collateral estoppel.”

‘In its statement of issues presented for review, Safe Flight

said nothing about collateral estoppel. Instead, it queried: “With

respect to the same evidence, which of the Findings of Fact. . .

[entered in the Seattle case or in the case now before us] . . . are

clearly erroneous and which Conclusions of Law concerning the

validity of the 540 patent are in error?”

ba aria a ee Bien a " ——

SORE ERA em caer seer eee PT OANA het ey ere MRNE Rt sepene

In the context described above, we hold that the issue

concerning the collateral estoppel of MDC and Sperry to

assert their defense of patent invalidity as against counts

one and two of the amended complaint was not raised and

preserved by Safe Flight in the district court and there-

fore may not be presented on this appeal. Grantham v.

McGraw-Edison Co., 444 F. 2d 210, 216-217 (7th Cir.

1971) ; Strouhal v. Allied Development Co., 220 F. 2d 541,

544 (10th Cir. 1955); City of Erlanger v. Berkemeyer,

207 F. 2d 832, 839 (6th Cir. 1953).

The findings of fact of the district court contain fifty

paragraphs. Under five different headings Safe Flight

argues that twenty-two of these findings, pertaining to the

validity of the ‘540 patent are clearly erroneous.

At the outset of its argument concerning these findings

of fact, Safe Flight observes that the questioned findings

are “completely inconsistent and directly contrary” to the

findings entered in the Seattle case, and postures the prob-

lem as one of determining which of the two sets of findings

are clearly erroneous under Rule 52(a), F. R. Civ. P.

We decline to approach the problem in this way. It is

true, as defendants concede, that prior adjudications as to

validity of a patent “are entitled to respectful considera-

tion and in doubtful cases they are strongly persuasive.”

Ritchie v. Lewis-Browning Mfg. Co., 196 F. 2d 434, 436-

437 (Sth Cir. 1952). It was on this theory that the district

court, in the case before us, admitted in evidence the judg-

ment, findings of fact and conclusions of Jaw entered in the

Seattle case. We have no reason to believe that the district

court in our action failed to accord these records of the

Seattle case the weight to which they are entitled.”

*At the outset of the present trial, the district court announced

that if it had a strong view converning the validity of the patent, it

would not be influenced by the finding as to validity in the Seattle

case, but that if the court found the issue to be in doubt, the Seattle

findings “would constitute make-weight.”

SE ee eee

DTS LUPE IR TY a Cem ay

ay UP eees-

Sailie ot COW Tien 9. eat Syyrrrersiey: eee re tarneene

A kdl GO 9 gp aie ale RESIN SL PEIN SMe REET TNE Lena Hert REAR ANS ——— %

But the respect which should be accorded prior adjudica-

tions as to validity of a patent does not, absent estoppel

running against the parties to the prior litigation, supplant

the primary duty of a court to dispose of cases according

to the law and the facts of the particular case before it. See

Ritchie, supra, at 437.

Our function on appeal is consonant with this view.

Moreover, it would not be practicable for us to enter into

an appraisal of the relative soundness of the two sets of

findings. The record of the Seattle case is not before us.

The parties have argued pro and con as to the differences

between the evidence in the two records, but we have no

basis for evaluating their differing appraisals. We have

accordingly determined the soundness of the findings of

fact in the instant case, as measured by Rule 52(a), by a

consideration of the evidence received in this trial.

We do not propose to deal individually with each of

the twenty-two questioned findings of fact and the evidence

relevant to each. Instead, we will consider them as a whole.

Taken together, and with some of the unchallenged findings,

these questioned findings represent the trial court’s deter-

mination that, on this record, the device described in the

patent claims at issue constitutes a combination of old ele-

ments, which combination would have been obvious at the

time the invention was made to a person having ordinary

skill in the relevant art. Findings having this import, if

sustainable on the record, warrant a conclusion that the

patent is invalid under U. S. C. § 103.

Safe Flight characterizes the device described in the

’540 patent as a “director” instrument, as distinguished

from a “displacement” instrument. Displacement instru-

ments provide a pilot with information as to the flight

situation then existing or which has just previously existed.

Utilizing this information the pilot is expected to determine

what corrective action, if any, should be taken, and proceed

to take such action. Director instruments, on the other

hand, convey no specific information to the pilot concerning

the then existing flight situation. Instead, they direct him

as to which way and how much he should move his controls

to perform some predetermined task.

According to Safe Flight, the particular director instru-

ment described in the 540 patent was primarily designed

to meet the jet take-off problem encountered because of

some aerodynamic peculiarities of jet aircraft. It had been

determined that, in order to meet this problem a new

criterion should be selected, namely, that the speed at the

lift-off had to be a certain percentage above a speed called

the minimum “unstick” speed.°

Speed is controlled by rotation of the pitch attitude

(raising or lowering the wheel nose of the aircraft). If the

pilot knows the pitch attitude necessary to attain the proper

lift-off speed and the existing pitch attitude, he can make ad-

justments to achieve the necessary pitch attitude. An instru-

ment displaying pitch attitude on an artificial horizon was

available, but it was subject to gyro precision errors,

Pitch attitude equals the angle of attack (the incidence

angle with which the wings attack the air mass) plus the

flight path angle, Therefore, another way of attaining the

pitch attitude necessary to reach the appropriate lift-off

speed is to determine the current angle of attack and adjust

the flight path angle accordingly. Safe Flight’s own prior

U.S. Letters Patent No. 2,945,375 (’375 patent) is a dis-

placement type instrument which provides a lift signel. Lift

is a function of forward speed and the angle of attack, thus ‘

the ’375 device provides a measure of the angle of attack. |

However, reliance on the ’375 measuring device in making 7

adjustments produced a phugoid or “roller coaster” type

flight path. Errors in acceleration measurement (and,

*The minimum “unstick” speed is the lowest speed at which one

can demonstrate a jet take-off without displaying hazardous char-

acteristics.

PELE L ORT IT SES

a ck acne ART ROAM fee “7 Shea ee |

Al0

flight path. Errors in acceleration measurement (and,

therefore, the ’375 lift signal and the angle of attack) were

caused by the pitch of the aircraft.

As Safe Flight concedes, the '540 patent is a modifica-

tion of the ’375 device accomplished by biasing the ’375 lift

signal with a ground acceleration signal. The princial parts

added to the ’375 device are a gyroscope and a pendulous

accelerometer. The gyroscope removes the effects of air-

craft pitch from the pendulous accelerometer, thus remov-

ing the error in acceleration measurement noted above. The

forward acceleration signal was added to the lift signal

from the ’375’s lift transducer and the combined signal

was displayed on a Fast/Slow meter.

The trial court found that a person of ordinary skill in

the part prior to 1958 would have no difficulty in realizing

that the determination of the forward acceleration would

necessitate the removel of the effect of pitch from an accel-

erometer. The court also found that, to a person of ordi-

nary skill in the art, having the ’375 patent before him, this

would immediately suggest the use of a gyroscope to remove

the pitch from the accelerometer therein described. The

prior art U. S. Letters Patent No. 2,942,864 to Sikora

taught that a gyroscope could be combined with the pendu-

lous accelerometer to remove the effect of pitch and thus get

a signal representative of actual acceleration notwithstand-

ing the pitch of the aircraft.

While there is room for debate as to the evidentiary

support for these and other questioned findings, we conclude

that they are not clearly erroneous. The trial court based

its findings primarily upon the device described in claim

one of the patent, on the theory that it was probably the

broadest claim. We find nothing in the record which con-

vinces us that this procedure was improper."

™We recognized that the foregoing discussion of the findings and

evidence is summary in form and omits much that the respective

parties rely upon. Since we are affirming, however, it seems to us

LOVE PETIT LOI Ie MINS | NAL IG _avwvansf

ELLER BALLAD ID OPT TE ern SS

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All,

Safe Flight takes issue with several of the trial court’s

conclusions of law pertaining to counts one and two, We

do not find it necessary to place our imprimatur upon all

of the questioned conclusions, Perhaps some go too far and

perhaps certain of the decisions cited are not in point.

What is important, however, is that the district court

rigidly adhered to the rules and criteria of the Supreme

Court in determining that the questioned patent claims are

invalid under 35 U. S. C. § 103."

All of the factual inquiries required under the Graham

decision, and in Reeves Instrument Corporation v, Beckman

Instruments, Inc., 444 F. 2d 263 (9th Cir. 1971), in order

to resolve the obviousness—non-obviousness dichotomy,

were made. Consistent with Reeves, the trail court deter-

mination that the ’540 patent is obvious took into account

the subject matter as a whole and did not rest alone on a

consideration of the individual elements of the claimed

combination and their individual novelty or lack of novelty.

The foregoing discussion renders it unnecessary for us

to consider the trail court's determination that some of the

questioned claims of the 540 patent are also invalid under

35 U. S. C. § 102(a), and that court’s determination that,

in any event, the ’540 patent was not infringed by the

Sperry AT/SC system.

a more extensive discussion would have little utility. Our conclusion,

stated above, is based upon our understanding of the record con-

sidered as a whole. In reaching that conclusion we have given due

recognition to the opportunity the trial court had, over a period of

weeks, to evaluate live testimony, and to query the witnesses on

doubtful points.

It should also be added that, in sustaining the questioned findings

of fact in this case, we are not holding that the contrary findings

in the Seattle case are necessarily clearly erroneous. Each set of

findings must be judged by the record in the case in which the

findings were entered. As previously noted, the record in the Seattle

case is not before us.

®See Graham v. John Deere Co., 383 U. S. 1 (1966); United

States v. Adams, 383 U. S. 39 (1966) ; Anderson’s-Black Rock, Inc.

v. Pavement Salvage Co., Inc., 396 U. S. 57 (1969).

Al2

This brings us to the issues on appeal peculiar to count

three of the amended complaint. Actually there is only one

such issue.

As noted above, the trail was had only with regard to

the validity of the ’540 patent (at issue in counts one, two,

and three), and infringement of that patent by the Sperry

AT/SC system (at issue only in counts one and two).

These issues were decided adversely to Safe Flight.

Thus, apart from the question as to the validity of the

’540 patent, the trial involved no issue concerning count

three of the amended complaint, and the judgment entered

at the close of the trail did not dispose of count three (or

counts four, five and six) of the amended complaint. But

Safe Flight nevertheless argues that the trail court erred

in denying Safe Flight’s cross-motion for partial summary

judgment on count three.

Discussion of this contention requires us to consider the

context in which Safe Flight made this cross-motion. MDC

first moved for a partial summary judgment dismissing the

third count of the amended complaint. In support of this

motion, MDC argued that, in view of an indemnity agree-

ment entered into between UCC and MDC, concerning the

manufacture of Speed Command Computers by UCC for

installation in MDC aircraft, of which agreement Safe

Flight had notice, and in view of the terms of the settle-

ment agreement between Safe Flight and UCC in the Seattle

case, and by reason of the fact that count three pertains to

the installation of UCC’s Speed Command Computers in

MDC aircraft, MDC has been released and discharged by

Safe Flight from any and all claims for such infringement.

Safe Flight countered with its cross-motion for a partial

summary judgment in Safe Flight’s favor on count three.

As we construe this motion, Safe Flight sought a ruling

j that MDC is estopped to question the determination in the

Seattle case on patent validity and infringement. The estab-

LEO OT Td PE OEM IRN Bae

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Al3_

lishment of this estoppel would lay the groundwork for Safe

Flight’s prayer for damages and injunctive relief on its

count three.

In support of this motion Safe Flight argued that, by

moving for a partial summary judgment in. reliance upon

the settlement agreement and judgment in the Seattle case,

MDC had bound itself to accept the adjudication, in the

Seattle case, that the ’540 patent is valid and infringed. In

addition, Safe Flight argued that, by reason of the privity —

between MDC and UCC, MDC was estopped by the Seattle

judgment, insofar as count three of the amended complaint

is concerned, from contesting the validity and infringement

determination made in that case.

Ordinarily the denial of a motion for summary judg-

ment is not appealable, even where there has been an

express direction and determination of the kind called for

by Rule 54(b), F. R. Civ. P. This is because an order

denying a motion for a summary judgment does not finally

dispose of any claim. See 6 Moore’s FEDERAL PRACTICE

2790 (2d Ed. 1972). But such an order would be appealable

if the effect of the order was to deny a petition for a pre-

liminary injunction. See 28 U. S. C. § 1292(a). Since

Safe Flight did seek injunctive relief in its motion for

partial summary judgment, we hold that the order denying

the motion is appealable.

The factual premises of Safe Flight’s motion, and of

MDC’s opposition thereto, are highly complex. The dis-

trict court did not deny the motion because it was con-

vinced that the motion was without merit, but because the

issue presented was so complicated the court did not wish

to dispose of it on a motion for partial summary judgment.

In effect, the denial was without prejudice. Under the cir-

cumstances we believe this was a judicious way to deal with

the matter. Safe Flight did not regard the count three re-

Al4

quest for injunctive relief as urgent. This is indicated by

the fact that Safe Flight did not seek an immediate appeal

from the order of denial, pursuant to 28 U. S. C. § 1292(a),

but was content to raise the question on the main appeal

after the trial.

We conclude that the district court did not err in deny-

ing Safe Flight’s motion for partial summary judgment,

and that count three remains to be disposed of in further

district court proceedings.

Safe Flight complains of asserted irregularities in trial

procedure, including piecemeal progress of the trail. We

have reviewed the circumstances complained of and find

nothing indicating an abuse of discretion by the trial court

or substantial prejudice to Safe Flight.

The judgment and order under review are affirmed and

the cause is remanded to the district court for further pro-

ceedings on counts three, four, five and six of the amended

complaint.

Al5

In THE

UNITED STATES COURT OF APPEALS

For THE NINTH CIRCUIT

d..

[SAME TITLE]

Order

Before: CHAMBERS, HAMLEy and WALLACE, Circuit Judges

The panel as constituted in the above case has voted to

deny the petition for a panel rehearing.

The full court has been advised of the suggestion for an

in banc rehearing, and no judge of the court has requested

a vote on the suggestion for rehearing in banc. Fed. R.

App. P. 35(b).

3 The petition for rehearing is denied and the suggestion

for a rehearing in banc is rejected.

6 me ee ant

Dated: September 13, 1973

FREDERICK G. HAMLEY

eeoeoeoeoevoeveveveeeve eevee eee eee ee &

United States Circuit Judges

Al6

UNITED STATES COURT OF APPEALS

For THE NINTH CIRCUIT

SAFE FLIGHT INSTRUMENT CORPORATION,

Plaintiff-Appellant,

vs.

No. 71-1751

McDonneELt Dovuctas Corp., &

SPERRY RAND CorPORATION,

Defendant-Appellees.

ORDER STAYING ISSUANCE OF MANDATE

Upon application of Ropert YALE Lizott, Esq. coun-

sel for the Plaintiff-Appellant, and good cause appearing,

IT IS ORDERED that the issuance, under Rule 41(a) of the

Federal Rules of Appellate Procedure, of the certified copy

of the judgment of this Court in the above cause be and

hereby is stayed pending the filing, consideration and dis-

position by the Supreme Court of the United States of a

petition for writ of certiorari to be made by the Plaintiff-

Appellant herein, provided such petition is filed in the

Clerk’s Office of the Supreme Court of the United States on

or before OcToBEr 20, 1973.

In the event the petition for writ of certiorari is granted,

then this stay is to continue pending the final disposition of

the case by the Supreme Court of the United States.

FREDERICK G. HAMLEY

United States Circuit Judge.

aR icles ORI AAS a

Al7

Explanation of changes made by Judge Gray in pen to

Defendants’ Second Amended Proposed Findings of Fact

and Conclusions of Law, (Page References are to the

original) infra A18-A37.

PAGE LINE INSERTION

4 27 Irrespective of how

4 30 ~ asa result of the addition

5 2 _ structural

5 26 and .

5 28 of having

6 4 forward

11 3 __—sihere

11 8 that

11 22 In the Sperry AT/SC system

12 18 what are therein described as

12 22 a stagnation point vane or an accelerometer

with the pitch removed,

12 29 However, it also was aware of the ’540

patent.

13 3 __ substantially

14 16 that

17-30 (See addendum at the foot of page 20

hereof )

19 27 , subject to addendum to paragraph 17

hereof.

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cee popceD

STUART LUBITZ, ESQ. wissen” : ies

.EDWIN H. TAYLOR, ESQ.

1880 Century Park East, Suite 500

Los Angeles, California 90067

§53-5050

Attorneys for Defendants

HAHN, CAZIER, THORNTON, HOEGH & LEFF

RICHARD B. HOEGH, ESQ.

DENNIS B. HAASE, ESQ.

14th Floor, 611 West Sixth Street

Los Angeles, California 90017

628-6151 ‘

Attorneys for Defendant,

McDonnell-Douglas Corporation

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

SAFE FLIGHT INSTRUMENT CORPORATION,

a New York Corporation, CIVIL ACTION

Plaintiff, NO. 68-2129-WPG

vs.

MCDONNELL~DOUGLAS CORPORATION, a

Maryland Corporation, and SPERRY

RAND CORPORATION, a Delaware

Corporation,

OF FACT AND

CONCLUSIONS OF LAW

)

GECOND-AMENDED

) PROPOSES” FINDINGS

)

Defendants. )

)

The above-entitled cause having come on regularly for

trial and the Court having duly considered the evidence and the

post trial briefs filed by the parties, and final arguments of

the parties and being fully advised in the premises, on the

whole record now makes the following:

Findings of Fact

1. This action arises under the patent laws of the

United States; Act of July 19, 1952, Ch. 950, 60 Stat. 792 et. seq.|;

Title 35, United States Code, §l, et. seq.; more particularly

;

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2. This is a civil action for infringement of United

States Letters Patent 3,043,540, (hereinafter designated the ‘540

patent) which was issued to Leonard M. Greene, and assigned to

plaintiff, Safe Flight Instrument Corporation, (hereinafter Safe

Flight) on July 10, 1962, from an application filed November 17,

1959 as a continuation-in-part of a co-pending parent application

filed October 14, 1959.

3. Plaintiff, Safe Flight, is a corporation organized

and existing under the laws of the state of New York, and has its

principal place of business at White Plains, New York.

4. Defendant Sperry Rand Corporation (hereinafter

Sperry) is a corporation established and existing under the laws

of the State of Delaware, and has a regular and established place

of business in the City of El Segundo, Staty of California, within

the Central District of California, and a place of business and

manufacturing facility designated as the Flight Systems Division

of Sperry Rand at Phoenix, Arizona.

5. Defendant McDonnell-Douglas Corporation (hereinafter

MDC or Douglas) is a corporation organized and existing under the

of the State of Maryland, and has a regular and established place

of business in the City of Long Beach, County of Los Angeles,

State of California, all within the Central District of California.

6. Defendant MDC is in the business of developing,

manufacturing and selling military and commercial aircraft,

including the model DC-10 airplane, equipped with airplane

instruments.

7. Plaintiff and defendant Sperry are in the business

of developing, manufacturing and selling airplane instruments.

8. Jurisdiction and venue of this Court was

determined. Defendants both have a regular and established place

of business within this district and the defendants' activities

charged by plaintiff to be infringements of the '540 patent were

oon e 2 & &

ages eam ‘the device of the '540 patent is an aircraft control

“system for providing an indication (e.g., electrical signal or

‘visual signal) which may be employed during take-off, landing

‘approach, go around and other flight modes. .

ied out in this district and elsewhere.

ai Ope

10. The claims of U. S. Patent 3,043,540 at issue

as to invalidity and infringement are, claims 1-8, 17, 19, 20,

22 and 26, inclusive, and claims 1, 3, 20 and 22 are designated

by the plaintiff as representative of these claims. Claims l, 3

20 and 22 designated as representative by plaintiff do not in each

instance recite all the elements (a) through (d) of Finding of Fact

No. 11. Those elements recited in the claims are referred to in

general terms of “means” such as indicated in parenthesis below.

The plaintiff has not shown or alleged any substantial distinction

between the representative claims and the other claims of the '540

patent.

ll. The device of the '540 patent is a combination of

old and well known elements, comprising:

(a) a stagnation point vane or angle-of-attack

vane (means responsive to lift);

(b) a pendulous accelerometer or longitudinal

accelerometer (means responsive to forward

acceleration) and a gyroscope connected to

remove pitch from the accelerometer (essentially

independent of pitch);

combining signals from (a) and (b) above to provide

a director signal; and,

(a) a visual display or autopilot (a

utilization mechanism).

| Each of these elements was known prior to the conception, or the

effective filing date, of the application leading to the '540

_ ereree “AZT

L|| patent. Each of the elements in the patent in suit is employed

|| in substantially the same way, to perform the same functions, in

3 substantially the same manner, in the prior art.

4 12. The prior art U. S. Patent 2,945,375 (filed on

5|| February 5, 1954 and hereinafter referred to as the "'375 patent")

6 teaches the combining of:

7 (a) a stagnation point vane (means sesponsive

8 to lift); 7 |

9 (b) pendulous accelerometer or longitudinal

0 accelerometer (means responsive to forward acceleration);

1 (c) a mixer circuit ‘(combining means) for |

2 combining the signals from (a) and (b) above, to

Bs) provide a combined signal; and,

4 (4) a visual display or autopilot (the

5 utilization mechanism) for employing the combined signal.

161 Devices including elements (a) - (4) as taught by the '375 patent

17/1 have been taught to be employed during take-off and landing and

L8 have been taught to be employed on prop and jet airplanes.

L9 13. The '375 patent teaches that a signal from a

20 stagnation point vane and a forward accelerometer (e.g-, longitudina-

R1 accelerometer, pendulous accelerometer) may be combined to obtain |

pe a signal.of the same general type as the '540 patent, which is

pS alternatively supplied to an autopilot or a fast-slow needle. |

z SA. The designation of the signal utilized in the '540 |

pS patent as a director signal defines no difference in structure over,

26 the '375 patent since the only difference in structure is the |

i addition of a gyroscope. Siowestis, the” eigeaie are designated in "540;

a and '375, the signal of ‘540 tothe utilization mechanism differs ‘

29 from that of '375 only by the a errand ge bpard ee |

60 error (6) from the acceleration signal, hy-weasorn of the gyro. The |

1 fast-slow needle in the '375 patent is the same as that in the "540,

patent, and it is only the devices connected to the fast'slow

needle that differ in

» the way discussed in paragraph 15 below. Vee

{aE Sonos tes ‘The. ily, difference between the '375 device and the

"$40 device is the addition of the gyroscope to the accelerometer

“employed in the '375 device. This difference is reflected in the

_ Bepresentative claims (e.g., claims 1, 3, 20 and 22) by reciting

“easentially independent of the pitch attitude of the airplane"

‘dn varying degrees of specificity. ‘The purpose of adding the

gyroscope to the '540 patent was to remove pitch [designated by

the Greek symbol theta (6)] from the accelerometer and thus obtain

a signal representative of forward acceleration notwithstanding the

pitch of the aircraft. Thus, the '540 device equals the device of

the '375 patent minus theta.

16. The prior art U. S. Patent 2,942,864 to Sikora

(filed on July 29, 1955 and hereinafter referred to as the "Sikora

patent") taught that a gryoscope could be combined with the

pendulous accelerometer to remove the effect of pitch and thus

get a signal representative of the actual forward acceleration

notwithstanding the pitch of the aircraft. Thus, the '540 device

equals the '375 patent plus the teachings of Sikora. 2

17. The modification of the accelerometer in the '375 ;

patent in accordance with the teaching of the Sikora patent to remove —

pitch resulted in no unexpected or surprising result.

18. The need for combining a forward acceleration signal

and a signal related to lift was suggested to Mr. Greene by Mr. :

Shevell and Miss Jones, employees of Douglas aircraft. The essence

of the conversations and correspondence between Mr. Greene, he.

nevess ent Miss Jones was the articulation of the value to the th

pilot ée-have ‘immediately available, at all times after Vp (rotation '

velocity), a combination of the assessment of coefficient of lift

and acceleration along the flight path , 80 that the pilot might climb

as sharply toward the maximum coefficient of lift (Cr nax? as paiig: °

acceleration would permit. Inasmuch as such a take-off procedure

for the first passenger jets would involve a substantial amount of |

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pitch to approach the C,_., (as compared with the prior passenger

propeller aircraft), a person skilled in the art prior to 1958

would have no difficulty in realizing that the determination

of acceleration would necessitate the removal of the effect of

pitch from an accelerometer. To a person of ordinary skill in the

art having the '375 patent before him, this would immediately

suggest the use of a gyroscope to remove pitch from the ny

accelerometer therein described. The Sikora patent teaches

precisely this use of the gyroscope and teaches the manner in which.

the gyroscope may be employed in connection with a pendulous

accelerometer (which is one of the accelerometers employed in the

'375 patent) to remove pitch in precisely the manner set forth in

the '540 patent.

19. In 1958, commercial jets were in their infancy; the

DC-8 was not yet operational, and Douglas was in the process of

working out the techniques of taking off and landing these heavy

and fast moving airplanes. The importance of combining coefficient

of lift and forward acceleration became apparent, at least to Mr.

Shevell and Miss Jones, in te course of development of such pre-

operational techniques, and, Mr. Greene adapted his prior knowledge

of the prior art '375 patent to produce the '540 solution virtually

as soon as he was exposed to the problem explained in terms of

coefficient of lift and acceleration. There was no long felt need

to which the '540 device contributed a solution.

20. Prior to September 24, 1958, Mr. Greene was working

on an aircraft instrument utilizing a G-rate device to be employed

in combination with a stagnation point vane, wherein tre signals

from these devices were combined and displayed. On September 17,

1958, Mr. Greene wrote his sales representative on the West Coast

regarding this system and the selling effort that should be

pursued. On September 24th or 25th, Greene traveled to

Los Angeles and was accompanied to Douglas by his sales repre-

sentative for a meeting with personnel at Douglas, a potential

Customer. At Douglas, Greene met with Mr. Shevell and Miss Jones

it which time the importance and relationship of the two poremeters|

| @oefficient of 1ift and acceleration during take-off were explained |

' te Greene. On or about October lst, Greene wrote to his patent nl

attorney regarding the combining of an acceleration signal and a )

lift signal. By October 11, 1958, Greene had reduced to practice a’

Gevice combining acceleration (i.e., ground plane acceleration) |

and a lift signal measured by a stagnation point vane. The

conception and reduction to practice dates are October 1 and

DI October 1l, 1958, respectively. Thus, the critical date as

to 35 U.8.C. 102(a) is prior to October 1, 1958.

21. The earliest filing date which the plaintiff is

entitled to as to the subject matter of Figures 1-6 and Figure 8

of the ‘540 patent is October 14, 1959, and the earliest filing

date which the plaintiff is entitled to as to Figure 7 of the

*540 patent is November 17, 1959. The critical date as to

35 U.S.C. 102(b) for the subject matter of Figures 1-6 and

Figure 8 and Figure 7 is prior to October 14, 1958 and

November 17, 1958, respectively.

22. The Lear development, as evidenced by the ASTIA

Document No. AD~112497, discloses and teaches to a person of

ordinary skill in the art prior to 1958 an angle-of-attack system

comprising an angle-of~attack error device (defined in the '540

patent as means responsive to lift and to the departure of lift

from a predetermined value) which produces an angle-of-attack

error signal, which signal is combined by a pitch mixer circuit

(combining means) with a rate of change of air speed (forward

acceleration) signal provided by an air speed sensor and rate

circuit substantially identical to the forward acceleration means

that is shown in Figure 7 of the '540 patent. The combined

signal from the pitch mixer is a signal of the same type referred

to as a director signal in the '540 patent and is employed to

drive an automatic pilot which is one of the utilization

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signal from a rate of change of air speed (forward acceleration)

mechanisms described and claimed in the '540 patent.

23. The Lear development yas evidenced by the systems

built pursuant to contracts with the government (e.g., C-45, T-28, |

P-100 and F-101) prior to the critical dates set out in Findings :

of Fact Nos. 20 and 2l,openly employed the combination comprising 4a

an angle-of-attack error device (means responsive to lift AN

and to the departure of lift from a predetermined optimum value)

which produces an angle-of-attack error signal which signal is

combined by a pitch mixer circuit (combining means) with a

device which in one version was substantially identical to the

forward acceleration means that is shown in Figure 7 of the '540

patent. The combined signal from the pitch mixer is a signal of

the same type referred to as a director signal in the '540 patent

and is employed to drive an autopilot which is one of the utilizatio

mechanisms described in the ‘540 patent.

24. The automatic pilot portion of the Lear system is

shown to the right of the pitch mixer in Figure 2 of the ASTIA

Document (Def. Ex. CJ) and is a utilization mechanism. The particul

utilization mechanism employed in the '540 patent was not |

considered by the plaintiff to be an essential part of the

combination of the alleged invention. The automatic pilot

nentioned in the '540 patent as a utilization mechanism is not

described in detail in the specification of the '540 patent and

a particular autopilot is not important in the '540 patent.

25. Neither director displays nor autopilots were new :

at the time of the conception of the '540 patent or the effective

filing dates of the '540 patent, and it was recognized prior to

such time that the signals supplied to an automatic pilot could

be supplied by a display as a command to a human pilot. The

fact that signals produced by a device are submitted as commands

to a human pilot rather than to an automatic pilot during a

particular mode of flight is not novel and produces no unusual

A2Z6

1% or surprising results but rather would have been a routine

‘g|| alteration to one of ordinary skill in the art prior to October

3 1958.

4 26. Prior to October 1958, ground plane accelerometers

S|| (e.g., Sikora patent) .and air speed rate devices (e.g., Lear

6|| development) were well known devices for measuring acceleration

71| and obtaining signals proportional thereto. The substitution of

8|| one of these devices for the other of the devices, prior to 1958,

9|| by a person of ordinary skill in the art would require only

1olt routine and ordinary engineering.

11 27. Prior to October 1958, angle-of-attack vanes and

12|| stagnation point vanes were well known devices for measuring

13 || physical events relatable in some way to angle-of-attack (one of

14] the parameters in determining coefficient of lift). The

15 || substitution of one of these devices for the other of the devices,

16|| prior to 1958, by a person of ordinary skill in the art would

17 || require only routine and ordinary engineering.

18 28. The Lear system as described in Findings of Fact

19 || Nos. 22 and _— employed during approach and go~around, and if

20 operated automatically in such modes of operation it would operate

21 in substantially the same way as the '540 device would enable

22|' manual operation by the human pilot observing a display in such

25 || modes of operation.

24 29. The Lear system was described in a printed

25 publication in this country more than one year prior to the date

26 || of the application for the ‘540 patent and was described and

27 || shown in such publication so that a person of ordinary skill in

28 || the art prior to 1958 would understand the system as set forth

29 | in Pindings of Fact No. 22 and would be able by routine wt

30 ! enplnsering, bes without invention to reproduce such a system.

31 |i 30. The angle-of-attack system described in Finding

32 || of Fact No. 23 built by Lear for the C-45, T-28, F-100 and F-101

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aircraft, worked as intended, was an operable system, was

reduced to practice and was not suppressed, concealed, experimental

or an abandoned experiment. The angle-of~attack system concept

and the generalized system arrangement as described in Finding of

Fact No. 23 did not substantially change in, the various aircraft

notwithstanding certain other specific details were altered and

refined.

31. The angle-of-attack system described in Findings

of Fact Nos. 22 and23was reduced to practice and delivered

to the government pursuant to a contract prior to the conception _

of the '540 device and more than one year prior to the filing

of the patent application which resulted in the '540 patent.

There were no restrictions or confidentiality imposed by Lear

or the government with respect to the angle-of-attack system

built and delivered under contract.

32. The Sikora patent, the '375 patent, the Lear system

and the '540 patent are all part of the same art.

33. The previously stated conclusions of the Court

with respect to validity of the patent in suit obviate the

necessity for the Court to rule on the other bases presented for

meiaeiinie! pita: sabia dealing with the prior art of MoRuer, al

Joline, Jude, Sperry Zero-Reader patent and Fischel and the

Muncie Gear Doctrine.

34. Each of the claims of the '540 patent alleged by

plaintiff to be infringed defines the combination of (1) means

responsive to forward acceleration, said means being essentially

independent of pitch attitude and providing a variable output;

(2) means responsive to lift also providing a variable output;

and, (3) means combining these two outputs to produce a director

signal which may be employed in a utilization mechanism such as

a meter or autopilot. The above elements are defined with

vs:

pes Of specificity with plaintiff asserting Clain 1

(pecbebiy) ‘being the broadest clain.

: Awe

peas So. 9B. The “Sperry AT/SC System" as the term is,employed ?

4 \orefers to the systems being supplied to Douglas for the DC-10

6] and to American Airlines as exemplified by Plaintiff's Exhibits

6 23, 24 ana 16. |

" 36. The Sperry AT/SC system is an automatic throttle/

8 speed control system for aircraft Unieh gives pilot guidance for

9 speed control during all modes of flight from take-off to

10 touchdown. The Sperry AT/SC system is the electrical sub-system

11|} portion of a generic closed loop control system of the type well

12)| known to the art. The Sperry AT/SC system utilizes control

13 equations to control the speed of the aircraft to a preselected

14]/ speed in flight modes other than takeoff ,and to control to a ah ‘

15/| computed reference coefficient of lift of the airplane which

16 determines the proper speed of the aircraft during takeoff. In

17 order to provide such control during takeoff pthe control equation

18 of the Sperry AT/SC system includes the difference between the

19|| appropriate reference coefficient of lift of the airplane and |

20 existing coefficient of lift of the airplane and flight path

21 emeacmmtenay 2 prae o : Lilt Sa. syeliney

ee 37. A The reference and existing coefficient of lift

eS paraneters and the flight path acceleration parameter ef—the

24|| Spewey-eyetem are not measured but are inferentially computed |

25 from many sensed inputs by sophisticated computational techniques. |

26 38, "Means responsive te lift" in the claims of the

27 ‘540 patent is described in the '540 patent as an angle-of-attack

28 vane or stagnation point vane which measures or senses angle-of-

29 attack or stagnation point position.

350 39. The Sperry AT/SC system does not measure angle-of-

31j| attack or any function of lift; rather it computes both the

32 proper reference and existing coefficients of lift of the airplane |

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40. The Sperry AT/SC system includes no device or”

mechanism responsive to lift as described and claimed in the

"540 patent nor any equivalent thereof.

41. The Sperry AT/SC system includes no device or

mechanism responsive to forward acceleration essentially

independent of pitch attitude as described and claimed in the

"540 patent nor any equivalent thereof.

42. Purthermore, the '540 patent, its file history and

evidence adduced at trial piinit means responsive to forward

acceleration essentially independent of pitch attitude to a

measurement of ground plane (horizontal) acceleration.

43. The control equation of the Sperry AT/SC system

includes a computation of flight path acceleration which is quite

different from ground plane acceleration and is in no sense

ute

44. The director indication of the "540 patent stems

One Thins, dines ,

from the combination of two signals that originate froma he “—

independent of pitch attitude of the aircraft as this term is

employed in the '540 patent.

stagnation point vane (or angle-of-attack vane) and an i

accelerometer with the pitch removed. a”

45. The Sperry AT/SC system abet i va

Oo POP ~ al ryete WPivvse Pe tro Less dinees hi,” ie

the_came—purpose—as—the—_540 patent and does not operate in the

same manner as the apparatus described and claimed in the 540

patent.

46. The construction of the Sperry AT/SC system, its

mode of operation and computational techniques were conceived by

Sperry by building logically upon its own expertise and knowledge

of the prior art. Marrrarnins, at abig uring, Gone. f th, ‘S49 poy

47. To the extent that the '540 system and the Sperry

system accomplish the same gross result of providing display

Signals .to the pilot for aircraft take-off, such signals are not

| paleved, by the ‘two systems were precisely the same, the Sperry

" AM/SC system and the system of the '540 patent are sinphotete

tly the same, in the two systems. Even assuming that the resu

Poaal

_@ifferent in the manner in which such results are accomplished.

48. The present suit was instituted by plaintiff days

after it became aware that defendant Sperry was the successful

bidder for the DC-10 contract for which plaintiff was also tompet.

This was prior to defendants Sperry and Douglas entering into sucl

DC-10 contract and prior to the defendant Sperry building the

device (AT/SC system) which became the subject of this litigation

or any other accused device. The plaintiff based its complaint

on the generalized specification issued by Douglas which did

not require any particular hardware. The plaintiff did not

know whether the defendant would infringe, but notwithstanding thi:

the complaint was not filed on information and belief. Large par

of plaintiff's Trial Memorandum were based on correspondence and

documents describing #he systems never built by defendant Sperry.

| ee plaintiff attempted to prove infringement

referring to

certain electrica¥ elements within the AT/SC Aystem and resorting

to a strained inferpretation of the claims Without reference to t

wee

ory. ] there was no att

| body ef the pa t or the file wrapper hi

“by the plaintiff to show how the numerous sensors and circuits fo:

computing Cy and Ciref in the AT/SC system were equivalent to the

vane and potentiometer of the '540 patent (other than by attempti

to show overall similar results of the total systems). The same

true with regard to the acceleration means of the '540 patent. E

was not at the time/of the complaint and there is fot now a reaso

basis for the allefation of infringement.

49. plaintiff has made press relgases and

contacted defendants customers or potential cystomers regarding

patent infringgment by selling or using the systems that are the

instant lawsuit.

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ordinary skill in the art prior to the time of the alleged

“froT”

50. The Conclusions of Law, set forth below, insofar

as they may be considered Findings of Fact, are so found by this

Court to be true in all respects.

CONCLUSIONS OF LAW

i. This Court has jurisdiction of the parties and of

the causes of action set out in the Complaint and Counterclaim.

2. The subject matter defined by the claims of the '540

patent in issue, as a whole, would have been obvious to a person of

invention in view of the teachings of the prior art patents, ;

U. S. Patent 2,945,375 ("'375 patent"), and U. S. Patent 2,942,864

("Sikora patent") and consequently the claims of the '540 patent

in issue are invalid under 35 USC 103. Wi

3. To the extent that the validity of the "540 patent

depends on the disclosure of a combination that “produces in some

olin

way or manner a surprising or unusual result whieh would not have

been expected by a person having ordinary skill in the art", the

patent in suit does not meet this test. The results obtained

by modifying or combining elements as was done in the '540 patent

would be obvious to one of ordinary skills in the relevant art, and

consequently the claims in issue of the '540 patent are invalid

under 35 USC 103. wg, Andersons Black-Rock Inc. v. Pavement

Salvage Co., Inc., 396 U.S. 57 (1969); Santa Anita Mfg. Corp. v.

Lugash, 369 F.2d 964 (9th Cir. 1967); San Marino Electronic Corp.

v. George J. Meyer Co., 155 U.S.P.Q. 617 (C.D. Calif. 1967); aff'd

422 F.2d 1285 (9th Cir. 1970); Canadian Ingersoll-Rand Company v. :

Peterson Products of San Mateo, 223 F.Supp. 803, 808, 139 U.S.P.Q.

61, 65 (N.D. Calif. 1963).

4. The Lear Engineering Report ER-1190, which was

distributed as ASTIA Document No. AD~112497, was a “printed

publication" within the meaning of 35 uSsC 102(a). Hamilton

Laboratories v. Massengill, 11l F.2d 584 (6th Cir. 1940), i

wr Nee eee etn He

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BE Beco xe anu ee

wr?

oert, denied, 311 U.S. 688 (1940); Indiana General Corp. v.

ss Takad AOS: A r Erte ‘ae

' t +¢ 249 F,Supp. 809 (S.C. Calif. 1966),

summa: F sehen’ reversed on other grounds, 408 F.2d 294 (9th

Cir. 1968). : cae

5. The angle-of-attack system of the Lear device was

“known or used“ prior to the date of the alleged invention of the

'540 patent within the meaning of 35 USC 102(a).. Stearns v.

Tinker & Rasor, 220 F.2d 49 (9th Cir. 1955), cert. denied 350 ~

U.S. 830 (1955).

6.. The angle-of-attack system of the Lear device was

in “public use or on sale" in this country more than one year

prior to the effective filing dates of the application resulting

in the '540 patent (i.e., before the critical dates ) within the

meaning of 35 USC 102(b). Piet v. United States, 176 F.Supp. 576

(S.D. Calif. 1959); aff'd per curiam 283 F.2d 693 (9th Cir. 1960);

Monolith Portland Midwest Co. v. Kaiser Alum. & Chem. Corp., 267

F.Supp. 726, 783 (C.D. Calif. 1967).

7. The angle-of-attack system of the Lear device was

a prior invention (i.e., reduced to practice prior to the critical

date) which was not abandoned, suppressed or concealed within the

meaning of 35 USC 102(g). Corona Cord Tire Co. v. Dovan Chemical

Corp., 276 U.S. 385, 48 S.Ct. 380 (1928).

8. The angle-of-attack system of the Lear device was

not experimental at a time prior to the critical dates. Smith v.

Hall, 301 U.S. 216 (1937); Tool Research and Engineering Corp. v.

Hancor Corp., 240 F.Supp. 296 (S.D. Calif. 1964), affirmed 367

F.2d 449 (9th Cir. 1966), cert. denied, 387 U.S. 919, rehearing

denied, 389 U.S. 893; Super Mold Corporation v. Clapp's Equipment

Division, Inc., 397 F.2d 932 (9th Cir. 1968).

9. The Lear angle-of-attack system as described in

ASTIA Document No. AD-112497 anticipates and reads on claims 1-6,

19 and 20 of the '540 patent within the meaning of 35 USC

oon oaqane a rnd KF

A33

102(a) and consequently these claims are invalid thereunder.

10. The Lear angle-of-attack system which is a “prior

invention", “known or used" and “in public use or on sale"

anticipates and reads on claims 1-6,° 19 and 20 of the '540

patent within the meaning of 35 USC 102(g), 35 USC 102(a) and

35 USC 102(b), respectively, and consequently these claims are

invalid thereunder.

1l. The claims in issue of the '540 patent, each

considered as a whole, would have been obvious to a person of

ordinary skill in the art prior to the time of the invention in

view of the prior art Lear development as referred to in

Conclusions of Law Nos. 4 through 8 above, and consequently these

claims are invalid under 35 USC 103.

12. The evidence establishes and the Court concludes

that each element of the patent in suit is shown in prior art

references. No single element of the patent in suit constitutes

invention. Scrutiny of combination claims should be even more

detailed when, as with the patent in suit, the old elements have

been previously employed in a similar relationship for a similar

purpose, or when the elements perform the same function in

combination as out of it.

13. Even if the claims here in issue disclosed the

combination of all of the elements of the '540 patent, each of

such claims would be invalid for lack of invention, that is,

obviousness, over the prior art here concerned, namely the '375

patent, the Sikora patent or the Lear development. Furthermore,

"A patent for a combination which only unites old elements with

no change in their respective functions, * * * obviously withdraws

what already is known into the field of its monopoly and

diminishes the resources available to skillful men." Farr Co. v.

American Air Filter Co., 318 F.2d 500, 503, 137 U.S.P.Q. 627,

629 (9th Cir. 1963).

7 chains of the '540 provide the standard aentamt.

me & 4a to be determined, Plaintiff has the burden

establish infringement of the '540 patent and has

pt aietained that burden. v & Mfg. Co., Inc. v. Linde

Merete 2 339 U.S. 605 (1950), 70 S.Ct. 854, 94 L.Ed. 1097;

melson. rue ¢ 322 F.2d 132 (9th Cir. 1963); Del Francia v.

stanthony cecil 278 F.2d 745 (9th Cir. 1960); San Marino

Blectronic Corp. v. George J. Meyer Co., supra.

15. Where, as in the present case, the elements of the

patent are found in various prior patents and the same are in the

field of interest, the patent will be construed strictly according

to its terms in determining infringement. Nelson v. Batson, supra;

Moon v. Cabot Shops, Inc., 270 F.2d 539 (9th Cir. 1959); cert.

denied 361 U.S. 965 (1960); San Marino Electronic Corp. v. George

J. Meyer Co., supra.

16. Claims of the '540 patent areto be construed not only

in light of specification and drawings, but also with reference

to the file history; claims are to . be explained by and read

in conjunction with the specification and in the light of

definitions and admissions made by the applicant. Moon v. Cabot

Shops, Inc., supra; Bacon American Corp. v. Super Mold Corp. of

Cal., 229 F.Supp. 998 (N.D. Calif. 1968); Oregon Saw Chain Corp.

v. McCulloch Motors Corp., 323 F.2d 758 (9th Gir. 1963);

Schnitzer v. California Corrugated Culvert Co., 140 F.2d 275

(9th Cir. 1944).

17. In order for the '540 patent to be infringed, each

and every element of at least one of the claims of the patent

must find its counterpart in the accused device. Nelson v. Batson,

supra; Bacon American Corp. v. Super Mold Corp. of Cal., supra.

Such is not present in the aces case as to any ctain. (~ Le.

ocean wd clewdurnw ok wh - & oh Pragp- 2. r+] - A ta f )

a | Af 4

17.

o or OF OD fF BU WD

a ee

a combination of elements as "means" for performing a combination

, a

18. Infringement of the '540 patent cannot be waa

by a view of the purposes and results of the device described by |

“the patent but must rather be. determined by reference to the terms

of the claims in view of the various considerations set out in

Conclusions of Law Nos. 14-17 above. When the claims are so read,

the Sperry AT/SC device does not infringe the claims of the '540

patent.

19. Furthermore, the claims of the ‘540 patent define

of stated functions and are infringed only if the Sperry AT/SC

device contains the devices described in the '540 patent for ABE 7

each of the stated functions or the equivalent thereof, Del

Francia v. Stanthony Corporation, Supra; Stearns v. Tinker & Rasor,

Sesser

supra; Bacon American Corp. v. Super Mold Corp. of Cal., supra;

Garrett Corporation v. United States, 422 F.2d 874 (Ct. Cl. 1970).

20. The Sperry AT/SC system does not contain the devices

described in the patent for performing the stated functions nor t

AWN

the equivalents thereof. WW

21. order to constitute equivalency of the devices

shown in the '540 patent, it must be established that each of the

same, or substantially the same, functions are performed in the

Sperry AT/SC system \in substantially the same way to obtain the

same results.

Air Products,

{

Supra; Del Francia v. &tanthony Cor ration, Supra; Sanitary

Refrigerator Co. v. Win rs, 280 U.S. 30 (1929); Kemart Corp. v.

Printing Arts Research oratories, 201 F.2d. 624 (9th Cir. 1953); .

San Marino Electronic Corp\ v. George J. Meyer Co., supra. |

22. The means fo performing the combination of

functions performed by the sp rry AT/SC system do not perform

the same functions in the same way to achieve the same results

as the combination of means of

‘540 claims and thus are not

the equivalents of those means £ performing the stated functions

Rs SEE ee Se a :

y : gp, %e

; ‘ me, /y

te ‘ Lae x. he on ae a ree a oer bar lig

5 Be _ Similarity, or evén identity, of results alone is

a ‘ \ Sxiteria of infringement and results are not per se

3} “patentable. Mix Device y. Air Factors, 210 F.2d 481 (9th Cir. 1954)

* Westinghouse v. Boyden Power Brake Co., 170 U.S. 537 (1898).

rigs & 24. Although the system disclosed in the '540 patent

and the Sperry AT/SC system may accomplish similar overall results,

the results are not the same. Even were the results accomplished

by the two systems precisely the same, the systems are dissimilar

as to the means of achieving these results or performing the

various functions and therefore this Court concludes that the

Sperry AT/SC system is not equivalent to the '540 device.

25. The Sperry AT/SC system is so different from the

system disclosed in the '540 patent in construction, principles

and method of operation that a conclusion that the two devices

are equivalent or that there is infringement is precluded

irrespective of the claims of the '540 patent. Westinghouse v.

»Boyden Power Brake Co., supra; SAAB v. Merganthaler Linotype Co.,

410 F.2d 979 (2nd Cir. 1969); Curtiss-Wright Corp. v. Link

Aviation, Inc., 182 F.Supp. 106 (N.D. N.¥. 1959); Decca Limited v.

United States, 420 F.2d 1010 (Ct. Cl. 1970).

26. An invalid patent may not be infringed and the

Court accordingly concludes that none of the claims here concerned |

are infringed by the defendants’ AT/SC device. Moreover, even if

the patent in suit were in any respect to be declared valid, the |

Court concludes that it is not infringed in light of Findings of af

Fact Nos. 34 through 47 and Conclusions of Law Nos. 14 through

25) “dake ati » 1 teak dowl im. ae Prrmy mapper rf ( fue +f * .

’ 27. Defendants are entitled to an award’of reasonable

eS CCE: +2 26 See

attorneys fees se 35 USC 285.

ee ae nomen semen erent ene a

leet

——

oo 2k oOo ao fF @B WB KY

eee www wdw wD ND DD YP YY BY Be

See eBtssgteteaeter et ee ssc apt& Se Ss

28. Defendants are entitled to a judgment that the

Claims in issue of the '540 patent are invalid and not infringed. >

Defendants are further entitled to an award of costs.

Frank 4,197)

Mala—fAreg, Pee

Vv. 2. Ostait Sudgorr®

fully submitted,

» HORN, JUBAS & LUBITZ

Pals —Jeneery te

aie

However, if the subject patent should be interpreted to

Addendum to paragraph 17:

cover the combining of any signal indicative of lift, in the

broadest sense of the term, with any signal indicative of forward

acceleration of an airplane, no matter how these signals are

derived, the Sperry system makes such combination, along with

other parameters.

And if the subject patent covers any device that processes

such combination into a director indication to the pilot, irres-

pective of the computational means by which such indication is

created, and irrespective of the other parameters that are used in

euch computation, the Sperry device creates such a director

indication,

I do not ascribe such breadth to the claims in suit and,

a fortiori, would find them invalid were I to do s0.

wat Sey i? Sn , “be

, DSi LS LODGED iadid

ny oth AND LUBITZ :

s euhal jo gs Esq. °

BE Ocr J0 4 ar Pl '7G iv@ MPs dl

ou SQ0nor.court SEEM EL uk TIUNT

bist. 51. OF CALIF. Erte ; . S

< Metorneys for iicaiiaks fe”

“AUN, CAZIER, THORNTON, HOEGH & LEFF

RICHARD B. HOERGH, ESQ. Ba sks

DENNIS B. HAASE, ESQ. ENTERED

Une paaeiae; cattenn peo + ee

eles, C ornia 90017 “

| 628-6151 MAR4 4974

CLERK, U, S. c

| Attorneys for Defendant, CEVTRAL Diste: sree 48

yi| McDonnell-Douglas Corporation

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

SAFE FLIGHT INSTRUMENT CORPORATION,

a New York corporation, CIVIL ACTION

-. . Plaintiff, NO. 68-2129-\WPG

vs.

JUDGMENT

McDONNELL~-DOUGLAS CORPORATION, a

Maryland corporation, and SPERRY

RAND CORPORATION, a Delaware

corporation,

Defendants.

By prior Order of the Court, all claims relating to the

validity of the 1540 patent and infringement of United States

Letters Patent No. 3,043,540 relating to the Sperry AT/SC system

were severed for trial from the remaining alleged claims of |

plaintiff against Douglas relating to infringement of the DC-9

and unfair competition; for the convenience of the parties and

the Court, the separate issues relating to the validity of the

‘540 patent and alleged infringement of said patent by said Sperry

SS. oS

ee ee ee ee ee ee ee ee ee ee

een ——

|| At/SC system came on to be heard before the Court und were tried

g2\|| commencing April 14, 1970 and concluding September 8, 1970.

3 Upon consideration of the record (including Transcripts

4|| and Exhibits), the post trial briefs of counsel and after argument

6|| by counsel, it being expressly determined that there is no just

6 season for delay and it being expressly directed that final

7 judgment upon each and all. of said severed claims be entered

8|| pursuant to Federal Rules of Civil Procedure 54(b), and upon the

9| Pindings of Fact and Conclusions of Law entered herein, it is

10} hereby:

11 ORDEPED, ADJUDGED AND DECREED that:

12 | 1. Plaintiff, Safe Flight Instrument Corporation, is

13 || the owner, by assignment, of United States Letters Patent No.

1) 3,043,540; in 1580€

ABZ 2. All of the claims/of said Letters Patent are qf

16 invalid; f Rent pe

17 | 3. Even if valid, defendantg Dauenos infringed, and

18 “ss not ‘infringe said Letters Patent;

19 | 4. Plaintiff shall not bring suit or threaten suit on

20 said Letters Patent as to defendants or any of defendants’

21 | customers;

22 || 5. Defendants recover from plaintiff, Safe Plight

23 : Instrument Corporation, its costs and disbursements in these

24 proceedings as taxed by the Clerk,

2s|

26 |

29| parep:_ FiserA 4 142)

30 | ’ Oe fe

nf a5 esa mbeme ats

j legal custody.

32 |

ERK, U.S. DISTRICT COURT

A40

Memorandum For Counsel

UNITED STATES DISTRICT COURT

CEenTRAL District oF CALIFORNIA

SAFE FLIGHT INSTRUMENT CORPORATION,

Plaintiff,

McDonnett-Doucias Corporation, a \ Ctvit No.

Maryland corporation, and Sperry /( 68-2129-WPG

Ranp CorporaTION, a Delaware cor-

poration,

Defendants.

At the time of our last meeting in open court, I advised

counsel that I would study the post-trial briefs, as well as

the selected references to depositions and to the transcript

in the United Controls case. I indicated that upon doing

so I would prepare for counsel a memorandum that would

set forth my tentative views in order that they might be

guided accordingly in preparation for oral argument. I

have made the promised study, and in the course of doing

so have also gone over considerable portions of the trans-

cript, restudied many of the exhibits, and fully examined

the notes that I took during the trial. This process has

caused me to reach some conclusions that, while still tenta-

tive pending oral argument, are considerably more definite

than I anticipated at the close of testimony.

In the interests of time and in the knowledge that it is

directed only to counsel who are throughly familiar with

the record and the issues, this memorandum is somewhat

telegraphic and does not purport to be technically complete

as to description of terms or functions. But, except as

A4l

Memorandum for C ounsel

otherwise noted, I think that I understand the general prin-

ciples sufficiently to justify expressing the views herein con-

tained.

1. Iam inclined to believe that the ’540 patent must be

declared invalid because of obviousness, within the mean-

of 35 U.S.C. § 103.

(a) The only significant difference between the ’375

device and the 540 device is the addition of a gyroscope to

the accelerometer used in the latter. The purpose of add-

ing the gyroscope was to remove from the accelerometer

signal the effect of pitch and thus get a more accurate signal

as to the actual forward acceleration. In other words, ’540=

275 minus Theta. Of course, it was well known in the art

to use a gyroscope to remove from a pendulous acceler-

ometer the effect of pitch. This is shown by the Sikora

patent. It would seem to follow, then, that ’540=’375 plus

Sikora.

(b) The plaintiff asserts (post-trial brief, page 27)

that none of the prior art teaches the combining of:

(1) A lift signal (or angle of attack signal).

(2) A signal of forward acceleration essentially

independent of pitch.

(3) An indication to the pilot (director signal or

otherwise) of the results of such combination. Inas-

much as each of these three items is, in itself, old in

the art, the only thing contributed by the plaintiff is

the combination of all three; and, as above noted, ’375

contains all three with the deletion of the underlined

words in item (2) hereof.

A42

Memorandum for Counsel

But it seems to me that the need for just such combina-

tion was suggested to Mr. Greene by Mr. Shevelle and Miss

Jones. The essence of those conversations was the articula-

tion of the need for the pilot to have immediately available,

at all times after VR, a combination of an accurate assess-

ment of lift and acceleration along the flight path, so that

he might climb as sharply toward Cx max as continued

acceleration would permit. Inasmuch as the angle of climb

so conceived would be relatively steep, it seems to me that

a person skilled in the art would have no trouble in realiz-

ing that determination of acceleration along the flight path

would necessitate removal of the effect of pitch from the

accelerometer. To the person familiar with ’375, this would

immediately suggest the use of a gyroscope to remove the

Theta. This appears to be precisely what occurred.

felt need to which ’540 contributed a solution. It seems

to me that this is considerably overstated. In November

1958, the passenger jets were in their infancy; the DC8

was not yet operational; and Douglas was in process of

working out initially the techniques of taking off and land-

ing these heavy and fast moving airplanes. The importance

of combining angle of attack and flight path acceleration

became apparent, at least to Mr. Shevelle and Miss Jones,

in the course of the development of such pre-operational

techniques, and, as mentioned before, Mr. Greene adapted

his prior knowledge to produce the ’540 solution virtually

as soon as he was exposed to the problem. A skilled man

was present at the right place at the right time; but what

he contributed was not invention.

(d) The plaintiff contends that a further advance by

’540 over ’375 is that the display to the pilot is a command

A43

Memorandum for C ounsel

signal rather than a displacement signal. While I think that

I understand the difference between these two designations,

I cannot fathom how the fast-slow needle in one device is

entitled to a different classification than the needle in the

other.

2. It seems to me that the ’540 disclosure is not novel,

within the meaning of 35 U. S. C. § 102.

(a) For the reasons hereinabove set forth, it was

anticipated by the ’375 disclosure.

(1) The Lear system discloses a combination of an

angle of attack error system with a rate-of-change of

air speed signal and produces a command signal for

driving an automatic pilot. In seeking to distinguish the

’540 patent from the Lear system, the plaintiff points

out that “The first and fundamental difference is that

nothing in the Lear program was intended to, nor did it

indeed, provide a director signal or indication for dis-

play to the pilot.” (Plaintiff’s post-trial brief, page 22).

I do not see how that makes any difference whatever.

Neither director displays nor auto pilots are new, and

the fact that the signals produced by a device are sub-

mitted as “commands” to a human pilot rather than to

an automatic pilot does not save it from “anticipation”.

(2) The Lear development was “. . . described in

a printed publication in this .. . country... more than

one year prior to the date of application for patent in

the United States... .” (35 U. S. C. § 102(b)). For

the reasons set forth in pages 97-100 and 180-185 of the

defendant’s post-trial brief, the ASTIA document con-

stituted such publication.

A44

Memorandum for Counsel

4 (ce): Because of the view I take that ’375 and Lear re-

quire holding ’540 invalid, I am inclined to refrain from

undertaking to make a conclusion as to whether ’540 is

also anticipated by Joline, Jude, Fischel, McRuer, or the

Sperry Zero Reader. If the necessity so to do is demon-

strated to me, I shall act accordingly.

3. My tentative conclusion is that the Sperry Rand

ATSC system does not infringe 540. If the test of in-

fringement is simply whether or not Sperry included a lift

signal and a forward acceleration signal among the in-

gredients brought together to provide a director indication,

the answer might well be in the affirmative. But such a

simplistic assessment would overlook a number of con-

siderations that appear material:

(a) Professor Graham has examined the Sperry

drawings that describe the ATSC system and asserts

that he has found therein a “means responsive to lift”

comparable to that claimed in the 540 patent. Because

of my limited ability to read and understand the draw-

ings, I acknowledgedly do not grasp the full purport of

what Professor Graham found. However, it is ap-

parent that Sperry does not seek to ascertain lift by

simply sensing the angle of attack through the use of

a stagnation point vane. As best I can understand the

evidence, Sperry does not seek to measure angle of

attack or lift; rather, it computes them on the basis of

several parameters.

(b) In order for there to be infringement, Sperry’s

“means responsive to forward acceleration” must be

“essentially independent of pitch”. The defendant in-

sists, persuasively, that its determination of forward

Die bans com laa Co aeele be

Tae

A45

Memorandum for C counsel

acceleration is the product of a control equation that

includes the acceleration of the aircraft along the flight

path. To the extent that this is so, such acceleration

would be quite different from ground plane acceleration

and would in no sense be independent of pitch.

the comparatively simple combination of two signals that

originate in the stagnation point vane and the accelerom-

eter. As is indicated above, the Sperry device takes

account of many more inputs (as set forth in Exhibit

DO), which it runs through a computer in some sophisti-

cated manner in order to produce an appropriate signal.

This hardly constitutes adopting the disclosure of the

patent and using it for the same purpose and in sub-

stantially the same manner as is taught by the ’540

patent. To the extent that the combination of elements

that make up the 540 patent can be found in the Sperry

device, it is there only as a part of a much larger combin-

ation that Sperry conceived by building logically upon

its own expertise and knowledge of the prior art.

(d) Both ’540 and the Sperry system accomplish the

same result to the extent that they both give compara-

able display signals to the pilot. The evidence contains

substantial indication, however, that the resulting signals

to the pilot would not be exactly the same in the two

systems. But even assuming that the results would be

precisely the same, the fact that the two systems are so

different in the manner in which such results are accom-

plished, precludes a conclusion that the devices are equiv-

alent or that there is infringement.

The trial and the concluding briefs contained many more

points at issue than I have discussed in this memorandum.

A46

Memorandum for Counsel

I find it quite impracticable to try to cover them all here. I

have studied them to the best of my ability, and they do not

change, but for the most part tend to confirm, the views here

expressed.

As is hereinabove indicated, the comments and con-

clusions contained in this memorandum are still tentative

and are subject to modification by oral argument. How-

ever, they have been rather carefully and deliberately de-

veloped as the testimony, exhibits, and briefs of the parties

have been considered. In the interests of time, and in the

anticipation that these conclusions will not be drastically

changed, it is requested that counsel for the defendants

prepare, lodge and serve appropriate findings and judg-

ment. The findings are not necessarily restricted to those

aspects of the case on which I have commented, but they

should nonetheless cover only matters that the defendants

deem essential.

Rather than schedule a time for argument and a sub-

sequent time for the settling of findings, it is proposed

that we prepare to accomplish both at the same session.

As soon as the proposed findings are received, I shall set

a time for final argument and for consideration of such

findings.

DaTED: October 15, 1970.

WILiLiaM P. GrRAy

United States District Judge

A47

Findings of Fact and Conclusions of Law

UNITED STATES DISTRICT COURT

WESTERN DIstRICT OF WASHINGTON

NorTHERN DIVISION

SAFE FLIGHT INSTRUMENT CORPORATION,

a New York corporation,

Plaintiff,

- Civit AcTION

UNITED CoNnTROL CORPORATION, a Dela- No. 7268

ware corporation; and UC Liguipat-

ING CorPoRATION, a Washington cor-

poration,

Defendants.

1. Plaintiff, Safe Flight Instrument Corporation, here-

inafter called Safe Flight, is a New York corporation

having its principal place of business at White Plains, New

York,

2. Defendant, United Control Corporation, hereinafter

called United Control, is a Delaware corporation having

its principal place of business at Redmond, Washington.

3. Defendant, UC Liquidating Corporation, is a Wash-

ington corporation formed as a successor to the original

United Control Corporation, hereinafter called the original

United Control. UC Liquidating was formed to effectuate

the dissolution of that corporation and the transfer of its

assets to United Control, which is a wholly owned sub-

sidiary of the Sundstrand Corporation.

A48

Findings of Fact and Conclusions of Law

4. The Sunstrand Corporation is an Illinois corpora-

tion headquartered in Rockford, Illinois. In June, 1967

it acquired the entire stock of the original United Control

Corporation of Washington, the predecessor of United

Control.

5. This is a suit in equity arising under the patent laws

of the United States which was instituted by the service of

a complaint by the plaintiff, Safe Flight, against the origi-

nal United Control, for infringement of three United States

Letters Patent:

a. U.S. Pat. No. 3,043,540 (’540) entitled “Airplane

Instruments” filed November 17, 1959* and issued

July 10, 1962. Involved in this trial are claims 1-8,

17, 19, 20, 22 and 26.

b. U.S. Pat. No. 3,112,905 (’905) entitled “Airplane

Instruments” filed May 24, 1961 and issued Decem-

ber 3, 1963. Involved in this trial are claims 1, 2, 3

and 11-14.

c. U.S. Pat No. 3,327,972 (’972) entitled “Airplane

Instrument for Furnishing a Bias Signal to Offset

the Effects of Forward Components of Gusts Dur-

ing Landing Approach” filed March 4, 1965 and is-

sued June 27, 1967. Involved in this trial are claims

1, 3, 6, 7, 11-21 and 23-25.

Leonard M. Greene is the inventor of [each of] the patent

in suit, and Safe Flight is the owner of [each of] the

patent in suit.

*The ’540 patent has an effective filing date of October 14, 1959

for all of the subject matter contained therein except for the addi-

tion of Fig. 7 and the description thereof at col. 2, 1.23 and col. 2,

1.32 of the ’540 Pat. [(Title 35 U. S. C. §§ 120; PX-1, col. 1, 1.9-

12; DX-A 26; PX-98)].

A49

Findings of Fact and Conclusions of Law

6. On July 13, 1967 the original complaint was served

and filed; on August 28, 1967 an amended complaint was

served and filed substituting as defendants United Con-

trol, a subsidiary of the Sundstrand Corporation, and the

UC Liquidating Corporation. Service was accepted by

both defendants.

7. On September 15, 1967 the amended complaint was

answered by both defendants. A further amended answer

was served on behalf of United Control on August 30,

1968.

8. In October, 1958 Leonard M. Greene invented a

director instrument and subsequently, on July 10, 1962,

obtained a patent therefor which is the ’540 patent here

in suit. The plaintiff’s commercial speed command system

is sold under the trademark “SCAT”. This system includes

the director instrument of the ’540 patent.

9. The SCAT speed command computer is presently

used by numerous airlines throughout the world including

Trans World Airlines. McDonnell-Douglas Corporation

manufactures an aircraft identified as the DC-9. The first

speed command system installed by McDonnell-Douglas

on the DC-9 was SCAT. Thereafter, McDonnell-Douglas

specified for the DC-9 a system having the attributes of

SCAT.

10. Captain S. Gordon Granger, former director of

Jet Operations and presently director of Flight Operations,

Research and Development, Trans World Airlines described

the SCAT instrument as essential in the take-off, missed

approach, landing approach, and the engine-out operation

A50

Findings of Fact and Conclusions of Law

during take-off phases of jet aircraft operations. The

Court believes Captain Granger’s testimony.

11. During the course of the trial the Court rode on

a DC9-30 aircraft and witnessed the SCAT system in

operation under certain circumstances described by Cap-

tain Granger, i.e., during a series of take-offs, missed

approaches, landings and one take-off during which an

engine was turned off. The Court’s observation during this

demonstration ride confirms Captain Granger’s testimony

concerning the utility and usefulness of plaintiff’s SCAT

system.

12. The system of the 540 patent is specifically adap-

ted to jet aircraft as contrasted to propeller driven aircraft

because of the high angle of attack, high velocity of jet air-

craft and the absence of slipstream. Propeller aircraft

operate at lower angles of attack, less speed and in the

presence of slipstream. There is no V1 (decision point of

take-off), Ve (rotation speed), or V2 (velocity of climb

out) problem propeller aircraft.

13. No one other than Leonard Greene, the inventor

of the ’540 patent, attempted to develop a command instru-

ment for jet aircraft for use on take-off, missed approach

and engine-out operation.

14. Leonard Greene experimented and developed the

system of the ’540 patent which is a new combination of

old elements which generate a new signal.

15. The novelty of the ’540 patent is the signal obtained

thereby.

eee

AS1

Findings of Fact and Conclusions of Law

"16. The signal developed by the '540 instrument and

the combination of elements used to obtain the signal were

not obvious to those skilled in the art to which the invention

pertains. In this respect the Court believes the testimony

of F. Dunstan Graham, a professor of aeronautical engin-

eering at Princeton University presently on sabbatical leave

and now serving as a professor at the University of Penn-

sylvania, and finds:

A. Prof. Graham had considerable experience as a

pilot, and, at the times material, held a commercial

pilot’s license.

B. Prof. Graham had been working in the field of

aircraft instrumentation for a number of years as

an aerodynamicist and flight control engineer with

Boeing Aircraft Company, Cornell Aeronautical

Laboratory, Wright Air Development Center, and

Lear, Inc. and was familiar with the autopilot cir-

cuits relied on by defendants.

C. Prof. Graham was directly responsible for the

Lear project on which the defendant relied during

the trial of this case.

D. Prof. Graham was somewhat familiar with the

work Mr. Green was doing in the field of aircraft

instrumentation.

‘In the opinion of Prof. Graham the prior patents, articles

and publications cited to the Court do not sustain defend-

ants’ contention that the 540 patent was previously dis-

closed and was obvious, In this respect the Court credits

Prof, Graham's testimony.

AS2

Findings of Fact and Conclusions of Law

17. United States Letter Patent '375 does not antici-

pate the ’540 patent because the ’375 patent was designed

for propeller aircraft.. Use of the instrument of the '375

patent on jet aircraft was not contemplated for the pur-

poses of the '540 patent.

18. Professor Graham demonstrated in open Court

that the SCAT instrument of plaintiff and the accused in-

strument of defendant are interchangeable, using the same

inputs and giving the same outputs ; and testified that plain-

tiff’s instrument and defendants’ instrument are the same,

with minor exceptions. This demonstration confirmed Pro-

fessor Graham’s testimony and the Court finds that plain-

tiff has established infringement of the claims in suit of

the ’540 patent by defendants’ instrument.

19. The instrument disclosed in the '540 patent is

operable.

20. The instrument of the '375 patent is a stall warn-

ing system advising the pilot of the approach of stall be-

cause of one or more factors, i.e., Cu/C. max, which will

enable the pilot to take the necessary steps in the operation

of an aircraft to avoid loss of lift and consequent stall.

21. The instrument of the 540 patent gives a com-

mand indication that is used in take-off when jet aircraft

are under full power directing the pilots to fly these aircraft

at a specified angle of attack and at the pitch angle that will

maintain proper angle of attack. To accomplish this result

the system of the 540 patent uses inputs from a ground

nS fs

ASS

Findings of Fact and Conclusions of Law

plane accelerometer and an angle of attack or lift sensor

from which it computes a director signal.

22. The Court credits the testimony of Professor Gra-

ham and Mr. Greene and plaintiff’s Exhibit 72 insofar as

they pertain to the SCAT system and the United Control

system and finds that lift and angle of attack are synony-

mous.

23. As to the Lear project relied upon by the defend-

ants, the Court finds that the subject matter of the ’540

patent in suit was not disclosed thereby.

24. The instrument of the ’540 patent is novel in its

use of lift, ie., angle of attack and the United Control

brochure confirms the novelty of an instrument using angle

of attack, i.e., lift. The ’540 computer computes from the

angle of attack and ground plane accelerometer inputs a

command signal that is anticipatory. It avoids the inherent

inaccuarcy caused by the lag and instability of an air speed

indicator.

25. Mr. Greene spent some three years demonstrating

the '540 SCAT system to many aerodynamicists and pilots,

before Trans World Airlines, through its Director of

Flight Operations, Research and Development, Captain

Granger, recognized the merits of the signal produced by

the SCAT system.

26. United Control Corporation had knowledge of the

existence of the 540 patent and with such knowledge pro-

ceeded to manufacture and sell its accused speed command

computer system.

A54

Findings of Fact and Conclusions of Law

~- 27: The purpose of patent 3,112,905 is to provide a

limit to the nose-up pitch attitude the pilot is directed to

achieve. The pendulum signal during acceleration is a

nose-up signal, the pitch limiting is accomplished by the

expedient of limiting the amount of the swing of the pendu-

lum by a stop. The stop in combination with the gyro

creates a bias signal if the pitch limit is exceeded and

directs a nose-down attitude. The system of the 905 patent

is an improvement on the instrument shown in the ’540

patent, but it is not an invention because the system shown

in the 905 patent would be obvious to a person skilled in

the art to which the invention pertains.

28. The purpose of the system shown in the 3,327,972

patent is to provide compensation for negative gusts during

landing approach. The system of the 972 patent is an im-

provement on the instrument shown in the ’540 patent, but

it is not an invention because the system shown in the

972 patent would be obvious to a person skilled in the

art to which the invention pertains.

CONCLUSIONS OF LAW

1. The Court has jurisdiction over the parties hereto

and over the subject matter of the causes of action put in

issue by the pleadings by virtue of 28 U. S. C. §§ 1338 and

1400.

2. United States Letters Patent No. 3,043,540 is owned

by the plaintiff, Safe Flight Instrument Corporation, is

valid, and claims 1 through 8, 17, 19, 20, 22 and 26 have

been infringed by the defendants.

A55

Findings of Fact and Conclusions of Law

3. United States Letters Patent No. 3,112,905 is owned

by the plaintiff, Safe Flight Instrument Corporation, and

is invalid.

4. United States Letters Patent No. 3,327,972 is owned

by the plaintiff, Safe Flight Instrument Corporation, and

is invalid.

5. Plaintiff is entitled to a permanent injunction against

further infringement of United States Letters Patent No.

3,043,540 by defendants.

6. The Court concludes that the plaintiff is entitled to

damages against the defendants. The amount and method

of computing these damages are reserved until the conclu-

sion of any appeal which may be taken from the Judgment

entered on these Findings and Conclusions or until such

time as the period for appeal shall have expired and no

appeal shall have been taken.

DaTED: This 11th day of December, 1968.

Approved as to Form:

Wit.1aM N. Goopwin /s/ —

United States District Judge

Hucu A. CHAPIN

Attorneys for Plaintiff

RIDDELL WILLIAMS

Attorneys for Defendants

A56

Final Judgment

Stephen E. DeForest

Riddell, Williams, Voorhees, Ivie & Bullitt

1520, 1411 Fourth Avenue Building

Seattle, Washington 98101

MAin 4-8970

Thomas M. Marshall

16 East 48th Street

New York, New York 10017

Hugh A. Chapin

Kenyon & Kenyon

59 Maiden Lane

New York, New York 10038

UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF WASHINGTON

NorTHERN DIvIsIon

[SAME TITLE] :

dy.

SETA BADR NASR

This cause having come regularly on for hearing by

this Court, the parties hereto having entered into an agree-

ment to settle this litigation, and the Court having been

duly advised in the premises,

It Is HEREBY ORDERED, ADJUDGED AND DECREED that:

1. Plaintiff's motion for a new trial as contained in

the Order to Show Cause dated June 23, 1969 on the issue

of obviousness of the United States Letters Patents

3,043,540, 3,112,905 and 3,327,972 is hereby granted.

A57

Final Judgment

2. Plaintiff’s motion for a new trial on the unfair

competition issue is withdrawn.

3. That portion of the judgment in favor of the plain-

tiff on the issues of validity and infringement by defend-

ants of United States Letters Patent No. 3,043,540, previ-

ously entered herein on December 11, 1968, is affirmed.

4. The judgment previously entered herein on Decem-

ber 11, 1968 is hereby modified and defendants consent to

modifications in the Findings of Fact and Conclusions of

Law and to the entry of this Final Judgment in favor of

the plaintiff on the issues of validity and infringement

of United States Patent Nos. 3,112,905 and 3,327,972.

5. Findings of Fact Nos. 27 and 28 previously entered

hereon on December 11, 1968 are hereby supplemented and

amended to read as follows:

“27. The purpose of patent 3,112,905 is to pro-

vide a Limit to the nose-up pitch attitude the pilot

is directed to achieve. The pendulum signal during

acceleration is a nose-up signal the pitch limiting

is accomplished by the expedient of limiting the

amount of the swing of the pendulum by a stop.

The stop in combination with the gyro creates a bias

signal if the pitch limit is exceeded and directs a

nose-down attitude. The system of the ’905 patent

is a nonobvious improvement on the instrument

shown in the ’540 patent and is inventive and patent-

able.

“28. The purpose of the system shown in the

3,327,972 patent is to provide compensation for

Final Judgment

~t-°. Negative gusts during landing approach. The sys-

tem of the 972 patent is a nonobvious improve-

ment on the instrument shown in the ’540 patent,

and is inventive and patentable.”

.- 6. Conclusions of Law Nos. 3 and 4 previously entered

herein on December 11, 1968 are hereby deleted, and Nos.

2 and 5 are hereby supplemented and amended to read as

follows: ignac!

“2. United States Letters Patent No. 3,043,540

is owned by the plaintiff, Safe Flight Instrument

Corporation, is valid and claims 1 through 8, 17, %

19, 20, 22 and 26 have been infringed by the defend- }

ants. United States Letters Patent No. 3,112,905

is owned by the plaintiff, Safe Flight Instrument

Corporation, is valid and claims 1, 2, 3 and 11-14

have been infringed. by the defendants. United 4

States Letters Patent No. 3,327,972 is owned by the

plaintiff, Safe Flight Instrument Corporation, is

valid and claims 1, 3, 6, 7, 11-21 and 23-25 have

been infringed by the defendants.

“5. Plaintiff is entitled to a permanent ‘injunc-

tion against further infringement of United States

Letters Patent Nos. 3,043,540, 3,112,905 and

3,327,972 by defendants.”

7. The Order signed by this Court on December 23,

1968 suspending the injunction contained in paragraph 2

of said judgment of December 11, 1968 is hereby revoked

and said injunction is modified to read as follows: The

defendants, their officers, agents, servants, employees and

attorneys who receive actual notice of this Final Judgment

aitbinitpiecsaitia

A59

Final Judgment

by personal service or otherwise, are hereby permanently

enjoined from infringing said claims of United States

Letters Patent Nos. 3,043,540, 3,112,905 and 3,327,972,

subject to the provisions of Title 28 U. S. A., Section 1498.

8. Plaintiff is granted a Final Judgment for damages

against defendants, jointly and severally, in the amount of

$2,500,000.00, and costs of this action as taxed by the

Clerk.

So Ordered.

DaTED this day of July, 1969.

/s/ Witt1amM N. GoopwIn

United States District Judge

Consented to this 3lst day of July, 1969.

[Names illegible]

Of Attorneys for Defendants

Presented by:

THomAs M. MarRSHALL

Of Attorneys for Plantiff

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.