# Petition for Writ of Certiorari — Safe Flight Instrument Corp. v. McDonnell Douglas Corp. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385607_1146%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1973 - **Citation:** 414 U.S. 1113 ## Text 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 SOP OR RV ARNO 2 f PERE een ts ne ER EO NE EE, cm LT a > PRE RES PIONS AH AP YP es ie 3 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 | ae Soke 2 rer rrr errr errr. 11 2 Soe |. rrr rT reer reer 4,11, 16 ; Sie a ae > Srrrrrrrr er errr rere ere ee 4,12 Article 1, Section 8, Clause 8, U. S. Constitution ... 4 aA ae Rem be aati a 4 EDP ORE ENTE ES Ne ‘ os IN THE Supreme Court of the United States OctTosBer TERM, 1973 No. 73- "*“ vr SAFE FLIGHT INSTRUMENT CORPORATION, a New York corporation, Petitioner, v. McDonnELL DouGLas Corporation, a Maryland corpo- ration, and SPERRY RAND CorRPORATION, a Delaware corporation, - rae espondents, 7% al 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 2 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 3 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 i 2) Sew sae. a ne Fons Ss: ear ve oy ee a a oe en se ee ee. ee ee ee lL 4 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 - et Re teh VADs weer ae te 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 FEN a OR = + ee ee ~ OO ALTAR PPT IR eh ne RANT RAO TU RIUAON ARORA PCY NIN EER SME Rye MEE co: = 6 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 7 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 : x P 2 3 & ¢ Pa & * Pan ¥ 8 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.” ee ANE A Ar RO 9 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 10 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 % & ie +4 ¥ a ; # | ee PRES PS RPGs TL Di eetie! % — EBay VE High IPD, Tete SIL MEE, ah fA Be ORDER COTATI NM FN TELAT Ts Th AO el 7 EPPS SI are SIO LP OLE GFT I Peas at ltt “ity ¥ base A re Pee 7" , 7 11 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 ¢ 4 : : & 6 ¥ us, ° ee ae Re SEDER LPM RRN 28 RLAL IO RINTAN nT . pore | Pa Bee PNT 5 a i = ATMA TULLE ATE ML OT ATI INP INI! EI £ é b> 12 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. SNE ry eee nye it EME ROAM YE LETS SMM OT Cah RMT RIS BAN tr epae Nghe eee hE Se AML LR OA IOLT DIL Oe He HOA, a 13 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. DAE ESATA SINAN EM Mert p . : aN a i tA IN i eR TRUMAN TN UT OC NORTE I Se se i A EROTIOSS 82 aS AE Tl BA EM 14 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 OTE ALIS I NOL RAL LEDS REALL RII I me wes PM IER TEGO RARE FEAR, WRT OS RI ie tap URE Ls ERED NRW a _— ae ranean et 15 263 (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). 16 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 4) %, f : : ' , \ : ‘ : 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 4 A pe tire oe ED > OTRAS SRT NOTE DIMA AREY SAS ON aS OTR RULE TY Sete tae Al 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 A2 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, v. 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 A3 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. A4 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 AS 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 A7 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.” a 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 ——— % A8 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 A9 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 i ee alata 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 ee a 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] 4. ed 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. eo oo @O NR OH eS & 2 Oo aT *&® WS BD Al8 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 | ; : : oer Oanerua rn KY oewnwnnrs w& © wd Dd DD KP PP KP PP PP PP PP Pe PP PB PrP 6 & ORO K8 PF ARH KY CHD 22H FB DH KH O a % Al9 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); (c) a mixer circuit (combining means) for 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 | oor eo af & BD PF ; » bw wwe dXKYP KY YP PP PP PPP e Pe es $ 2 $ 3 SSR ABs aH HY CL eRe ae &@ Ww YH SO 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 yoyr QUININE one nen HERI As % oon eo oo *® fC W.H 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 oonraonan fF aA WD FY Ye ob’ Dd DD DD WD DDD DBD YP YP YP PP YP PP PP PP Pe 2 SseSsSeeaseaskeeeses & or2Aaanne BS dD KF O A27 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 | eeoseasens | ~ ee YPeY YP PY PP Se Seer ee Se “AZ 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” ae 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. o on fo fo fF &S WD SY >» Pow’ OR OH F&F BH HY SO « 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 Cc 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 x= wr Nee eee etn He Pe YP YP Yb PB SBRBRBRBBSBSEELTE GBS & +. 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 Ha 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). 92 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 10 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 a 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 * . os ’ 27. Defendants are entitled to an award’of reasonable eS CCE: +2 26 See attorneys fees se 35 USC 285. ee 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. ae 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 ee 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 | zn 28 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, v. 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. (c) In this connection, the plaintiff refers to a long- 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. (c) The plaintiff's command indication stems from 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 [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385607_1146%3A1. Public record. Not legal advice.