# Petition for Writ of Certiorari — United States v. Saulnier (No. 927) > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386420_0383%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1959 ## Text “EEL BO ae MAY 10 1960 Colt IN tact Bak * -; Lee onc: cp | Snail Dex ; i : cio : She Spe ont of el a me : . Ooroser Term, 1959 | wc - Unrrep ‘Staves oF AMERICA, PETITIONER : , : . v. 4 " ‘ : Raymonp SaubnmeR .\, PETITION FOR'A. WRIT OF CERTIORARI to THE UNITED STATES — at or. CLAIMS GEORGE COCHRAN DOUL. : Assistant Attorney Gearerat, MORTON HOLLANDER, WILLIAM E. MULLIN, Attorneys, - : Deseriudint of Justice, Washington 25; D.C. a > , & INDE os ¢ \ : ; “ Page Opinion Slow Ap en gree eh gs Win wines ae edi heen asackas Ve EOE re ie oe Question gy ania dkehideiace pC ence ee eee ¥ Statutes involved . ...--.----- Shae de iis gash AAT. wt 2 Die in id nos nncacmueedene ilenmes enbiniincoe 4: Reasons. for peeing! okd erin ica ndioeneke ee, S SE ree 4 Abate: iN eedhalousendie Pea fe Appendix A__._----.- Re ook. ERTL SO 14 eer SRE heii OEE Dye eee ee CITATIONS ) Cases: see ha 4 Atlantic W orks v. Brady, 107 U.S. 192......---:..-- 7 Badowski v. United States, 135 C. Cls. 93.---- weleres 11 Blish, Mize and Silliman Hardware Co. v. Time Saver ——- __% _ ___: Tools,-236-F.-2d 913, certiorari denied, 352 U. S. | ESS AR RS I eee ae eS | Busell Trine? Co. v. Stevens, 137 U.S. 423 2._... 2... 10- Carbice Corp. v. American Patents Co., 283 U.S. 420... 10 Concrete Appliances ‘Co. v. Gomery, 269 U.S. 177... - 11 Crest Spécialty v. Trager, 341 U.S. 912_-...--2-2---- ee _ Cuno Engineering Corp. v. Autymatic Devices Pr 314. . EE ERR TaRR Seg: 7k oR AR 8,11 Densmore v. Scofield, 102 U.S. | eee Re a ~% 11 S. ase - "Fond Du Lac County v. May, 137 U.S. 395_....-.--- 10 . Great Atlantic & Pacific Tea Co. v. Supermarket Equip- . fient Co.,. 340 US. 147...::...-.......-- ee . eS) Grinnell Washing Machine ep: v. Johnson . e 0.5 247 * Meter ako cngucaewss te Dated 10. _ Heald v. Rice, 104 U.S. 737... eB Sa ie geo »). By order dated April, 18, 1960, the Chief Justice extended — the time for petitioning for certiorari to cand: includ- ing May. 10; 1960. The jurisdiction of this Court: is inv éked under 28 U.S.C. 1255 (1). QUESTION PRESENTED "Whether the Court of Claims has improperly low- ered the standard of invention in holding’ patentable , (1) Seat . —™ @- ? ee a combination of two old evi ices, beth known to the : 7 prior art, even though, in the combination, each of the two old devi ices achieves its distinct and independent : result without coacting or coopérating with the-other device. to. achieve any new result over and above the — two results achieved by the old devices acting singly. | 4 ~ a. _ STATUTES INVOLVED ee Title 28 of the United States ‘Code provides in pe rtinent part: $1498. W henever an in¥ention. desrihed in and covered by a patent of the United States. ‘is used or manufactured by or for the United - ‘ »- States without license of the owner thereof | or Jawful right. to. use- or manufacture the same, the owner’s remedy shall be by action» against the United States in the Court of. - Claims for the recovery of . his. °.easonable -. and entire compensation for such - use and - manufacture. For the’ purposes of this section, the use or manufacture of an invention described in and covered by a patent of the United. States by a contractor, a. subcontractor, or: any per- son, firm, or corporation for the Government and with the autherization or consent of the — Government, shall ‘be construed ds use. or © manufacture far the United ‘States. — Title 35 of - United States Code. provides in- ‘pertinent part: | § 101. Ww hoever invents. or discovers any new ~ and usefal process, machine, manufacture, or. composition of matter, or any new and useful * g.- ; Res ° improvement. ‘thereof, may obtain a patent ‘therefor, subject-to the conditions and seqente-. . ments of this title. $102. A: pore shall be entitled. to a patent unless— (a) the invention was known or: ‘used by . - others in this country, or patented or described ina printed. publication in this or, a foreign oe equntry,- before the invention. thereot by: the applicant for patent, ee -(b) the invention was patented or inscrtned ima printed public: ation in this or a foreign -- -eountry or in .public’ use or on: sale in this . country, more than one year prior, to the date - title, if the differences between. the subject matter sought to he patented and-the prior ‘of the application for “cau in. - the nates States, * * * § 103. A, pats nt. roay sat be obtained though.” the invention is not identically ‘disclosed a described ‘as: set forth in “seetion 102 ‘of. this art are such. that the subject matter as a whole. would have been © obvious at the time othe invention .was made to a person having RES ordinary skill in-the art to which said subject matter pertains. Pate ntability shall not be “negativ ed hy ‘the manner in which the inv ention was made. | | “nN . 6 ‘ ie | . . * * : : * ‘. o ° 5 ae § 282. - patent shall ‘be pa valid. The burden of: “establishing invalidity of a ‘patent shall rest on.a party asserting it. ‘The followitig shall be defeuses in any action | ie involving the validity or infringement. of a pate nt’ - shall he pleaded: - of te. ae ~ (2)° invalidity of the patent or any: dni in eae suit on any ground specified in part FT of thi® title as a ‘condition. for patentability, oy eee wire Sa aaa BN ha, ; STATEMENT S aaeee pclae ‘brought ‘this’ ak akon the United States in the Court of Claims -under 28 U.S.C, 1498 ‘to recover for infringement ofzan allered inveh- ° tion covered ‘by. United States. Letters Patent No. }+2,125,752 2, issuéd to respondent on August 2, 1938. +The alleged: invention, entitled “Remov able Roof for’ the Cockpits of Airgraft, ’? is actually’ an assembly. of * two devices.* The first de view enables the puot. of a - covkpit-type airplane to slidé the’ canopy, or roof,’ of the cockpit, backwards and forwards to-any. “desired position, for egress and i ingress ‘to the cockpit. when the - plane is on the ground, and for the intake and shutting’ Sout of - air in: normal: Hight. The device consists of a pair of carriagts, which, as pertnanent © tts of the. airplane, slide ajong tracl.s placed on- er side of the fuselage. ft he cockpit’ eanopy is fitted i over the cockpit and attached to the carriages. - The carriages are connected by a series of gears and “levers to a hand crank or. other meais of mechani- cal. powér by which the pilot can slide the carriages, and thas the’ eanopy, ,back and forth. The second device enables the pilot to detach -the canopy from the: carriages instantaneously 80 that, in. a flight * a 7 en The claimsein suit and the specifications and drawings of re- -. Spondent’s patent, are set out-in the, Court of Claims’ fading» of , "fact ( APR infra, ‘pp. 20-4y. ‘ _~- we . XN t v @ ° | “ ‘ ; « es Fe ) 3 , \ Pee te ‘ s F \ P ; e F . eT el “ . snipe Tes 3 p : te. . _ emergency, | he can. quickly. jettison: the: canopy and — “ “bail: out”? without obstruction froin -the canopy. | This, second. device consists of a handle ‘loc ‘ated - in - the, roof. of the canopy “ald. connected: by cords, levers, : and rods tv each of the clamps by which ~ the canopy. is . attached *to the -sliding carriages. When the handle’ is- pulled, the cords, levers and -rods operate to unlock all of the clamps simultane- _ ously.» The pilot, oh the eangpy by lifting it v slightly upwards, so that the wind will pull 4t-from - . the plane. ©! ¢- fhe United States raised the. defense that the patent - . was invalid for lack. of inv ention over the prior. art. The case was! referred to a trial commissioner -who, after hearing the evidence, found that the, two ele-. ments covered by the patent in si had been disclosed - in’ prior patents (App. B, infra ‘pp. 455 50)| and con- . ‘cluded that, the claims in suitt were invalid. : The | ‘ @pmmissioner summarized his findings as follows: * * * claims 1, 2, 3, 4, 6, and 7 of the’ *patéent- in suit are found fo" be invalid over the dis- } -. . elostires of prior patents (1) in. that these 4a ; patent claims merely’ recite old combinations, —@ .- ~. of old eléments producing no, new or, unexpected. results, and (2) in that the differences between the. terminology of these elaims .and that of the. ive art patent are such that the. subject matter aS a whole would have been obvious, at. ‘the time the Saulnier construction was devised, | to a’ person having ordinary skill in the field © of removable roofs for the cockpits: of aircraft [App. B, — p. 49}. a 9 a“ s % The Court of &. rejected those dudlings. While the court found that th the sliding and detaching - devices had been anticipated ‘by the prior art,’ it held the ‘Saunier patent valid, since, in its view, the two devices ir combination ‘constituted a patentable in- - vention, even though each of the two devices operated separately and independently and “did* not act con- jointly” with the other (App. A, ifra; p. 16). ~ Hav. ing also found that the patent was infringed by the United States, the court entered judgment that re- spondgnt was entitled te recover compensation for the Government's “unlicensed use of [his] patented. invention”’ (App. A, infra, p. 43). 1 REASONS FOR ‘GRANTING THE WRIT The decision, below, if left. standing, will mean that limitless numbers of combinations heretofore. thought -unpatentable, are’ now to be, made the subjects of *The court's findings indicate that the sliding device was - disclosed in prior patents issyed to Sutton, Joyce, -Hathorn, Alexander, Fivak, Petters, and Boulton (App. A, infra, pp. 28-31). In its ‘opinion, the.court indicated. its belief fthat the ‘Sutton, Joyce, Hathorn, . Petters, and Boulton patents con- tained the sliding device (App. A, infra. pp. 16-17),*but. stated -that the Alexander and Pivak patents, “obviously do not antici- pate” the claims in suit. The court's findings indicate that the ‘ prior patents issued to Hicks, Hall and Helwig contain the detac hing device (App. A, infra, pp. 27, 30, 31). However, the - court’s apjnion mentions only the Hicks’ patent as containing the detaching device (Ap. A, infra, p. 17). *A determination o the pee of damages which may be due the respondent {gr infrthgement has been reserved under Court of Claims ‘Role 38(c) until the issue of the United : States’ liability has been finally drm (see App. A, infra, ; - p. 43). : 4 4 "6 satent monopolies. ° Thus, even if correct, the decision . ? , ; js of such far-reaching importanee as to require ‘re- view by this Court. Moreover, the decision below: constitutes a clear ernor of ‘law (Crest “Specialty v. *. Trager, ‘341 U.S . 912; Great Aflantic.& Pacific Tea - -Co. v. Superiarkel Equipment Corp., 340 U.S. 147) cin departing from, and ‘conflicting with, long standing’ principles worked out by this Court in defining - standards of invention or patentability. _1: The most serious error in the decision below—- and the one with the most far-reaching conse- quences—is the court’s pronouncement that the com- . bination in‘ issue is patentable in spite of the court’s ee conscious and expressed. awareness (see p. 6, supra) | that the combination consisted solely of two old dévices which do not coact or cooperate to achieve any new result over and above the results achieved by the two old devices acting ‘singly. If anything is settled in our patent law, ‘it.is that such combinations may not be rewarded with patent monopolies. « A long line of decisions by this’ Court, stretching back over. the past century, have firmly’ | established this rule. Thus, in Reckendorfer v.. _ Faber, 92 U.S: 347, @he Court held invalid a patent on a combination, in the same wooden holder, of a lead pencil and an, eraser, both of which were old in the art. In Atlantic Works v. Brady, 107 U.S. 192, the Court held invalid a combination in a single boat of a dredging device and a device for sinking the boat to any desired level, both of the devices having heen used before. .In Cuno Engineering Corp. V. 549856 —60-— 2 ae ath or *‘inventive. genius’’ (Concrete A ppliances Co. v. Gomery, 269 U.S. 177, 185; Mantle Lamp Co. v. Aluminum Products Co., 301 U.S.°544), or a “Hash of creative genius” (Cuno Engineering Corp. Vv. Auto- matic Devices Corp., 314 U.S. 84,91).* ° * ~ * Congress, in: enacting 35° U.S.C. 103, supra, p. 3, appears to have limited the application of the “flash of creative genius” +) test, Cuno Engineering Corp. vy. Automatic, Devices Corp., 314 U.S. 84, 91, insofar as it could ever be applied to bring’ into consideration the manner in which an invention was made. » Lig Ro Me Palmer Co. v. Luden’s, Tne., 236 F. 2d 496 (CLA. 5). . But no matter how far downward, if at all, Congress revised— rt eee the standard of -invention m°vodifying the patent law in 35 ~—~“TES.C. 103 (compare Lyon v. Bausch, & Lomb Optical Co., 224 F.2d 530 (C.A,. 2), certiorari denied, 350- U.S. 911, with, Coy Stanley Works vs Rockwell Mfg. Co., 203 F. 2d 846° (CLA. 3), re certiorari denied, $46 U-S. 818) it is clear that Congress did : not lower the standard of invention to be ‘applied in patent- abilify cases so far as to ‘award patent monopoly. protection to the respondent’s combination, . which plainly; lacks, vention. See,e.g., Blish, Mize and Silliman Hardware Co. v. Time Saver / Tools, 236 F. 2d 913 (CLA. 10), certiorari denied, 352 U.S.° | 1004, There is a possibil’:y that the lowering of the standard ’ _ of invention by. the Court of Claims in this case resulted, at _ least partially, from a belief ‘on its part that. Congress in 35 U.S.C 103 has revised the standard of invention downward. . See Badowski v. United States, 135 C. Cis. 93, the only case Soe _ cited in the court’s opinion in the instant case. .Badowski reiied — - ; on Lyon v. Bausch & Lomb Optical Co., supra. See also, Zonolite Co. v. United States, 138 C, Cls. 114. In any event, if 35 U.S.C. 103 is to be accorded any such effect, it should, we submif, be per- : 6 . mitted only after review and clarification by this Court. } = e 12 It is » clean, under the cited cases, that the assembly of respondent’s eombination did not require the exer- cise of any inventive faculty. In this aspect, the case is much the same as Hendy v. Miners* Iron Works, 127 U.S. 370, in which, the Court held invalid a patent in which. the icivantiien. c laimed was the- ‘mounting of an ore’ feeding cylinder, old in the art, on a timber frai® made movable by: rollers. which were also old in the art. . The Court said (127 U.S. at 375): Mérely putting rollers under an article, $0 “as to make it movable, when, without rollers, it “would not ‘be movable, does not involve the in- — ventive faculty, and is not patentable * * *. Moreover, there is no patentable combination’ | between the rollers which make the. timbers ° ae movable and ‘the feeding eylinder I, mounted upon the timbers. The°union of parts is‘merely an aggregation. The feeding eylinder, mounted: upon ‘timbers which have rollers, operates no gy differently from.what it does when mounted : upon timbers which have no rollers.’. 3. It is, of course, impossible to predict the overall | “elect of the- Court of @laims’ repudiation .of the ‘standard to be applied in determining the patentabil- "The striking similarity between the instant ‘case and, the Hendy case, supra, is shown by the testimony of the ré&pon- dent's expi@rt witness, appearing at page. 140 of the transcript of testimony, that the invention in the respondent's patent. con- sisted’ of. nothing more than the “addition of the carriage or support” between the cockpit £anopy. and the fuselage of the airplane. . It is difficult to imagine how the respondent's intro- duction of a carriage or support, mounted on an old sliding device and carrying the old detaching device, ‘constituted the exercise of the inventive faculty any moreyan the jmtroduction by the patentee in Hendy of a frame mounted-6n an old mov- . ing device and carrying ‘an old ore feeder device. ° % = — ~ we * p rian - ny o ——- rf . 13 ity, of awombination of olé devices. -But even ‘viewed from the single perspective of the Governinent’s mili- tary development and procurement hrograms, it'is be- lieved that the decision below will have a far-reaching effect. More-than one-half of the patents on which in- | fringement claims have been’ made against the. mili- _~ tary-departments have involved combinations,® and . under 28 Ug§.C. 1498 all infringement suits’ agains _ the United ‘States must be brought the Court of Claims.. The stan “ot invention applied by that Se is thus in itself of sub- _ stantial public importance, - 2, . A — cae CONCLUSION e | /. For. the foregoing reasons, it is. respectfully ‘sub- | mitted that this petition for a writ of certiorari fo should be granted. | | oe J. LEE RANKIN, «= Solicitor General: GrorGe Cocuran Dovs, — Assistant Attorney General. _ Morton HoLanper, tint - Wittiam: E. Mvtiin, : : — Atfrneys. “May 1960. eae ae “At the present tiple atone, 51 administrative claims for pa- tent infringement are. being processed by the Department of the Army. Of those, 40 involiée patents to mechanical, elevtri- _ cal or electromechanical. devices based on combination claims. The Department of the Air Force is processing 99 patent in- fringement claims, 52 of which are based on: patents ‘which ‘ mvolve combinations of mechanical or electrical devices. The Department. of: thet Navy has beffre it 57 claims for patent > infringement, 22 of which are based’ qn patents inyolving a combination of mechanical.or electrical devices, , . a Mr. Albert K. Geer was on the brief. eX ow « ° aa awa APPENDIX A +. oe the ated States Cour ot eins No. $r- 54 a (Decided January 20, 1960) - * -. RAYMOND SAULNIER y. THE UNITED STATES Mr. Maw C. Louis ‘for. plaintiff. Messrs. W. Saxton j Seward, Brown and Seward, Samuel L. Davidson, Rickard G. Kline; Cushman, Darby Cushman, Michael Gould, and: Surrey, Karasik, Gould and Efron, were on the briefs. | _ Mr. Francis H. Fassett, with whom was Mr. Assistant Attorney General George € 'ochran Doub, for defendant. t Ps : OPINION ee - Warranen,_Judge, delivered the opinion equally true that the mere fact that the patented idea was. : simple, does not prove that it was invalid. We ure concerned | here, énly, with whether plaintiffs claim was novel in the | sense that the word is used in patent law. As stated, the combination which plaintiff invented was | a canopy or roof over a cockpit that was both slidable back and forth and also was completely detachable when desired by means of an instant release mechanism lovated within the éockpit. Of coutse the two mechanisms, one for sliding tl. + roof back and forth aind ge other for completely detaching .. the roof, did not act conjointly. Whén one. resuit was de- sired, one mechanism was used, and when another result was desired, another mechanism was | The two did not © operate at the same time. But no Pie acanopy — that was both susceptible of’ being back and forth and also of being completely detached when desired. Plaintiff invented such a canopy—something no one ad had been able to do. Prior to plaintiff's patent there had been petiatt granted _ on canopies which the pilot could completely detach from ~ the aircraft, that would fly off, when desired, as in the Hicks | patent relied on by the defendant; but the Hicks patent did not slide back and forth, for normal entry and. exit. Also, . there had been slidable roofs or canopies, to permit normal ard and exit, as in the Sutton patent, also relied on = . , oa = se “defendant, but this toot : and canopy could not be conmpletity 3 ’ disengaged. It is true Sutton claimed.that his roof could be slid completely out of the way, “whereby his egress from the | : airplane i is not hazardous.” This may or may not have been - so; but the roof was still there, adjacent to the cockpit the pilot: wished to leave in a hurry, his plane riddled with -. _imachinegun bullets, perhaps, and on fire, and it provided many “catching-places” for the strap of a parachute or the pilot’s clothing. Also, this device was not instantaneous. ' After the. enfergency occurred, the. pilot was still forced to open the canopy in,order to get out. In plaintiff's device the pilot need only to pull the releasing mechanism and the roof was instantly biown completely away, leaving nothirig, in the _ way of a roof, to interfere with the pilot’s escape. * - It is significant that the defendant sdopted plaintiff’ s ~ device instead of Sutton’s. . The Joyce patent calls for a windshield that. was slidable back atid: forth. . This, too, is but one part of plaintiff’s in- vention, but the commissioner says the hold,down clamps of, not the Joyce, but the Hicks patent, which was releasable but - not slidable, might have been used to instantaneously detach ~ _ the cockpit cover: Unfortunately, for defendant, Joyce did not do so, nor did anyone else until plaintiff came along. The same may rightfully be said of the Hathorn patents. A number of other patents are mentioned in Finding 16, but these, obviously, do not anticipate plaintiff's: paterit. The British patent to Petters, et al., has thie same vice, or . . . Worse,.as the Sutton patent. In. it the roof is stidable back _ and forth and, in case of an emergency, it can be opened in... ~ _.. the middle and each part folded back beyond. the cockpit. — ~ But the two sides are still attached to the airplane, and what | the wind would do to them, flapping them back and forth, is horriblé to contemplate. It may be, as the comanissioner suggests, that the wind would tear these two halves off the. airplane. ‘This seems to us uncertain, but, if it would, would it do it immediately, before the pilot- attempted to escape from the cockpit? Maybe so; maybe not.. But in plaintiff's device the pilot, by merely pulling a cord released the means that held the canopy in place, so that there was nothing to keep the slip stream from blowing it away instantaneously. “As mue . as we respect the opinion of our learned and able . J . . et seq., citing: cases in support 1s commissioner we cannot agree with him that this: patent "anticipates plaintiff's: patent. Plaintiff’s Ss patent is a decided _ ° Simprovement over t : British. patent, an improvement that might mitke thie différence between life and death to the pilot seeking to escape. Jn plaintiff's device there is no possi- bility of the canopy’s interfering with the pilot's; escape, . because the whole hing i is immediately blown away: The British Boulton patent has the same vice as ot Sutton * :- - patent: the roof is not detachable from the. airpfane, but: remains attached to it at all times. ~ We agree with the’ commissioner that the ev idence i is in- sufficient to show that the Lockheed Sirius dirplane, built for-Colonel Charles A, Lindberg, « sign 75, or the Deuglas: Aircraft plaintiff's patent. Ye O-46A._ antici ipate There is no question that a combination of old dennis cussed this in Badawski v. U States, 135 C. Cls. 93, 102, to produce a new and Ces is patentable. We dis- hergof. We voter to what ’ we Said there. A canopy that would slide back and forth, even in flight, . was old; a detachable canopy was old. But a canopy that was both slidable Back and forth and completgly and in- C ‘urtiss- Wright , De- stantaneously detachable was new.. There can be no doubt | that such a-canopy was useful. _Defendant’s long confinuec use of it, to the exclusion of all others, i is eloquent t ti ata of Sag fact. | We think it is not amiss to say that France hei paid * plaintiff for the use by the United States of his invention in Certain aircraft canopies procured by the United States prior ~ toSeptember2, 1945. This was done under the Blum-Byrnes . _. Agreements between the United States and France, under which each government undertook to compensate its own citizens for claims against the foreign government. _ It. also might’ be said that the British Government has purchased frpm plaintiff @ license te use his inverition on its aircraft. Further, at the time of plaintiff's application in the United” States Patent Office prior art was cited to show that plaintiff's claim 1. was unpatentable. After argument, however, and an amendment to state that the slidable canopy was “capable of being operated when in flight,” the claim was allowed and — . cs ; yt 29 ale a ~ .% ANOI-85FQGD-2. °° : Model FOF -6, -6P, -1, -8 ANO1-245FBA-2. = «—*~«. ~— Model F2H-1. me, ANOI-240PBB-2° 0” Model F2H-2, F2H-2N * . ANOI-245FBB-2A-. Model F2H-2, -2P-" ANO1-245PC0A-2. Model F2H-1N ° No evidence.was. presented at the initial trial of this case: as to the constructién of tlie above-identified aircraft. | * Plaintiff is entitled to recover‘and judgment will be entered ‘© to thet effect... The ease is remanded to the trial commis- ‘ sioner, pursyant to’ Rule.38(c), topdetermine reasonable and entire compensation for defendant's unlicensed use of Plain- tiff’s ‘patented i invention: Barksnare, District Judge: sitting by nstarantio LaRA- More, Judge; MapbEn, Jv dye, and JONES, Ghief J udge, con- 7 - cur. . : @ Pie . . - ° . . ‘ . a ‘ ° « . x . . e? . . - ‘ , \ | Pee ? _ 20 . | 0 . -. . a” FINDINGS OF FACT The court, having considered the evidence, the report of Trial Commissioner Donald E, Lane, and the briefs and » : ‘wee of counsel, makes findings of facts follows: | 1. This is a paterft suit under Title 28 .C,, Section 1498, for reasanable and entire compensation for alleged un- licénsed use or manufacture by or for the defendant of an invention deseribed in a United States patent. Plaintiff's petition alsa claims” under Title 28 U:S.C., Section 1491, and under the patent ews of the United States, Title 35_ U.S.C. At pretrial, the parties agreed to a se ee of issues for trial, and that.the questions. of valiffty and in- fringement of the patent in suit by tlie United States be ‘first determined upon full proofs, findings of fact, and argutne nt of coynsel, and that any accounting issue be de- ferred until the entry of an oder sustaining the petition. 2. Plaintiff is a citggen of France residing in Paris, France. On Angpst 2, 1958, U hited States Tetters Patent No. 225,752 was issued to the plaintiff on an application for patent filed in the Unitéd States Patent Office on December "ox, 1936. The patent ‘is entitled “Removable Roof for tlie - Cockpits of Aireraft.” Said Saulnier patent 2,125,752 is hereinafter referred to as the patent in suit. All right, title “and interest in, to,.and under the patent in suit was vested in the Alien’ Propérty Custodian on January 18, 1943, and was returped to plaintiff? on September 4, 1947, pursuant to the provisyons of the Trading With the Enemy Act, Title 50 - .US.C. Appendix 1, and Executive Order No. 9095, as amended. «Plaintiff notifigtl defendant ‘in November 1951 of- plainti iff's claim for esmpensation for the unauthorized use by the defendant ofthe invention covered by the patent. here in suit. € The defendant denied —— claim in May por. . cil . PATENT IN SUIT. 3% The subject matter in suit relates to the construction . of a removable roof or canopy for covering the cockpit of un aircraft, the canopy being hoth slidable from open to closed positions and detachable from the aircraft. The specification Of the patefit in suit reads as follows: The present invention concerns improvements in re- movable roofs covering the cockpit of an airplane pilot. ’ and can . to immediately get rid of his roo 21 sare / The roof according to the present invention id intended to be opened’ normally through a sliding displacement if in ¢ase of accident or in case of ] be wholly and immediately detached from the body o the airplane. - This arran nt enables the Po in case of danger, , in order, for instance, to be able to jump with his parachute. The device according to the presept invention is es-’ sentially constituted by a frame connected in a detach- able mahher with two carriages adapted to slide along rails fixed to the sides of the fuselage, these carri _ * being — to be operated froni the inside of the air- splane by the p two lateral panels. The whole normally slides along’. ’ ilot. This frame carries the roof and the the rails through the carriages, The device is com- ‘ pleted by means for permitting the my by a mere “ Operation petformed from-the ‘inside o | the airplane, to release the frame from thé carriages by which it is _ carried. A preferred embodiment of the present invention - will be hereinafter described, with reference to the ac- companying drawings, given merely by way of example, ‘and in which: Fig. 1 is a perspective view of the system, the remov- able roof being detached from-the es dine cockpit; Fig%2 is a similar view showing the roof fixed to, its. carriages and partly moved in a backward diréction; Figs. 3, 4, 5 and 6 are perspective views showing de- > tails of the device serving to the fixation of the d As shown by Fig. 1, the,detachable roof 1 is made.of a frame, consisting of bent pieces 2 and 3, connected to- gether by upper members 4 and.5 and the lower members 9 and 10. The roof proper is fixed to the upper mem- ders 4 and 5, this rook being advant usly made of a translucent material. The two lateral panels 7 and 8 are © made of a translucent or transparent material fixed to bent pieces 2 and 3 and-to upper and lower members 4 and 5, and 9 and 10, respectively. The lower members 9 and 10 carry fixation members - 11, in the form of rings provided with a radial slot 22 — . (Fig. 6), which serve to connect and secufe the detach- _ _ able roof to carriages 12 and. 13 through ‘spindles 14, rigid with rods 15. Under normal conditions, membdées 1! are in position in-the space between lugs 16 rigid with the carriages, and said members 11 are fixed in this position by spin-, “dies 14. When bell-crank lever 17 is operated by means of con- ~ tro! member ‘4, through cables 18, thé brarich 19 of this A Cc. ‘ , 22 lever moves in a forward direction and drives rods 15 in the same direction through the medium of pieces 20. - In this movement, the whole of rods 15 moves in a for- ward, direction and spindle 14 leayes the —_ between lugs 16. Rod 21 is located now opposiie the slot 22 of ,member 11 and the removable roof can be soparated * from the carriages-and got rid of when it iy pushed upwardly. ; oe | ee The whole of the mechanism is kept in this position by finger 23. Said finger/has been acted upon by branch _ 20-of lever 17 in the course of the forward movement of rods 15. But as soon as it comes opposite notch 24, said finger is moved back downwardly by its return. 2 spring 25 and drops‘ into the notch 24 of piece 20, thas © preventing the latter from moving backwardly and spin- dle 14 from: coming back into the space located between lugs 16. Thus, once the operation has been performed,, the pilot can release control member 34 /withgut the mechanism coming back to its initial position. When the roof isdn the normal position, in ot the _ friime is secured to carriages*12, 13, rods 15 are/in their rear positions and members 11 are locked on spindies 14, + in such manner as to assemble all the elements together, | . the whole being kept in the closed position by spring 26. This position is shown -in Fig. 3, corresponding to the fixation of the roof to the carriages.as shown by Fig. 2. In this position, the roof is allowed to slide, as above ~ explained, while remaining assembled with carriages 12, 13, alorig rails 27, fixed to the longitudinal members of the fuselage. a Se al) 6 Spies me Carriages 12 are, for this purpose, provided with rollers 28 which roll along rails 27. e@ movements of the carriages are controlled thrangh racks 29, pro-- vided on the carriages, and toothed wheels 30 actin on said racks and operated by the pilot through mak 31, acting through the medium of rod-32 on a.small | rack 33 in mesh with a smal] pinion which is not visible on the drawings. but which is. keyed on the spindle of toothed wheel 30. oe It will be readily understood that, with such an | arrangement, when the pilot rotates crank 31, he pro-— . duces ‘a sliding displacement of the whole and of the movable roof along the rails and therefore along the fuselage. : . ' The sliding displacement corresponds to the normal opening and closing movements of the roof. .__. When, in flight, the pilot wishes to get rid of his _roof, for instance in order to jump with his parachute, he Sqernten, in the manner above described, the control . member 34 located at the upper front part of-the cock- 0 R. Saulnier 2,125,752 . 3 * Se : Le ° . ¢ , F, t t yt. ° , ; } a (Nah i] a Nitin ~ (ion -4 : : ‘ber 27, 1935, in France,’ for his application in the United States, filed twelve months thereafter under the provisions | of 35 U.S. C., 1946 Ed., ) % CLAIMS-IN SUTT’ _. 5. Plaintiff has restricted’ his charge-of patent ‘infringe- ment to claims'1, 2, 3, 4, 6, and 7 of the patent in suit. Claim 1 recites a combination’of structural elements, and is reproduced with indentations and added emiphasis to facili- _tate identity of the str structure récited. eta Vi > aa vf In combination With an aircraft having a codinie (1) a roof normally slidable above said coulie and capable. of being operated when in flight, (2) means operative from the i nn e of said cockpit for displacing said roof, (3) said roof being detachable instantaneously from 3 said airplane, and . (4) means, operative from the inside of said aig, ‘for detaching said’ roof from said airplane. 6. Claim 2 of the patent in suit differs from claim 1 in adding a support for the roof and in addir y means for de- tachably securing the support and roof téfether. Claim 2 is reproduced | with indentations ‘and added — Claim 2: In combination with an airplane having a eockpit, hi a roof for said cockpit, 2) a support for said ‘roof slidable with respect: ‘to said cockpit, . ' (3) means operative from the inside of said cockpit for controlling the movements of said support with t to said cockpit, Gy means for detachably securing said support and said roof together, an _ (5) means operative from the inside. of said cockpit for instantaneously releasing said securing means. 7. Claim 3 in suit differs from claim 2 in that the roof sup- port is defined as two carriages. Claim 4 differs from claim 3 in that it recites fro rails on the cockpit to carry the _ carriages, and also recites annular elements and spindles to lock the ‘roof to the carriages. Claim 6: is like claim 1, but recites a closing element for a space for pilot or .?. instead of uae ads a root for a cockpit. Claim 7 is gen- A I A / aa eee : ° erally similar to claim ¢. but adic 9 recitul of a slidable support for'the closing element, and elds means for detach- ably securing the support and closing element \ogether. Claims 3, 4, 6 and 7 are reproduced in full: ” ; Claim 3 - In combination with an airplane having a boily pre- vided with a coekpit, a roof. for said cockpit, two cars . these for supporting said roof slidable with- respect to > said body ‘on either: side of said cockpit, means opera’ tive from the inside of said cockpit for controlling the sliding .displacements of said carriages with respect to* said cockpit, means for detachably securing said roof to said carriages, and means operative front the iniside of said cockpit for instantaneously bringing said securing‘ means out of action: “ ie : Claim, , ° : . . . . ; . *e : ~ In. combination with an airplane having a hody pro- - vided with a cockpit, a roof for said cockpit, two rails extending on either side, respectively, of said cockpii, carried by said body in the fore and aft diredtion of siid airplane, typ carriages for supporting said roof slidable along eA rails, respectively, means operative from the ‘inside of said cockpit for controlling the slid-_ ing displacements of said carriages with respect to.said — rails, registering annular elements carried by said roof and re carriages respectively, iri-coaxial relation, pins adapted to engage in all of said annular elements for securing said roof to said carriages, and means, opera- tive from thie inside of said coekpit, for moving said pins ouf from at least one of said cooperating annulat ele- ments whereby said roof is detached froni said carriages. -- aft Claim 6 In combination with an aircraft having. a space for pilot or passengers, a closing element for. said space par- mally slidable with respect to said space in a fore and direct ion, capable of being operated, when in flight, ° means operative from the inside of said space, for dis- lacing said closing element, said closing element being etachable instantaneously from said aircraft, and means, operative from the inside of said space, for de- taching said closing element from said aircraft. Claim 7. In combination with-an aircraft having a space for pilot or passengers, a closing element for said space, a @ : 26 support for said closing element slidable with respiect — ‘to said space ip-a fore and aft direction, means operative from the inside of said space for controlling the move- nients of said support with respect to said space, means for detachably securing said support and said closing’. _ element roo: Bg and means operative from the inside of said space for instantaneously releasing said securing means. ae 8, Plaintiff stipulated that plaintiff “takes the position herein that the patent in suit calls for some actual mechani- cal (electric, hydraulic, etc.) means for moving the-canopy _in its normal sliding operation; and consistent with this position, does not charge infringement by canopiés of the type used on certain trainers, for instance, where there,is . nothing more than a fixed handle to be grasped and pulled or: pushed.” Pn a ates 9, Defendant urged that ‘the Saulnier patent clainfein suit are invalid and do not define a patentable invention in disclosures of the sixteen prior patents * and rior uses United States Patents SE enor 1.327.389 ° January. 1920 Vrederiburgh ----------*------ 1, 352, 106 September 7, 1920 CIID annnnnccgertaceee November’ 14, 1922 RS Creme 1. 527,263 - February 24, 1925 Joyce ..--..----------------- ~ 1,682,220 . August 28, 1928 Hall .....--.--*-------------- 1,720,041 July 9, 1929 _ Smith... .--------------- 1,779,388 October 21, 1930 + Alexander, et al__----~--------- 1; 790,785 . . -February 3, 1931 Hicks .....-.------------------ 1, 808, 018 April 28, 1931 Pivak .....----------- ol ° oa * Sa oe 10. During the prosec ution of the Saulnier applic ation ' for patent in the United States Patent Office the patent ex- © —aminer cited Hathern 1,939,051 and Ilelwig 2,033,768, and ; rejected claim . as originally filed, mating: . - ) mapmniie - is SUTTON __ 2,073,325 — windshield in either direction. The Joyce patent adjustable ° windshield is capable ot being operated from inside. the °. cockpit when in flight, but only by pushing or pulling. No mechanical means are provided. 15. The Hathorn patent, cited by the patent examiner, discloses a slidable transparent cabin top for open cockpit aircraft. . The Hathorn'cabin tops may be operated, during flight, but only’ by pushing and pulling. No» mechanical means: are provided. Referring to figures 2, 4, and 8 of the Hathorn patent drawitgs, a cabin top.20, shown in the open "30 . . position. in figure 2, is supported for sliding movement on” _ rails 21 to cover the forward cockpit: 17. The rear cabin top "25, also shown in the open position, is is mounted for sliding movement on rails 24 to cover the year cockpit 18. ‘A handle 28 is provided on’the inside of each cabin top to enable the oe- cupants to adjust the position of the eabin top along the sup- porting rails during flight: A locking mechanism 29 is connected by cables 35 to operate a plurality of latches 36 for ‘securing the cabin top in adjustesl position. The cabin tops. are carried-by supporting plates 42 which are provided with rollers 44 and 46 engaging tlie rails 21 or 24. 16. The Logan patent discloses a protective hood for air- - ‘craft comprising a plurality of pivotally supported arcuate segments adapted. té nest. together in the cockpit: The Logan hood is neither'slidable nor jettisonable.. The Vred- enburgh patent discloses a pivoted windshield for one side‘of, the basket of a captive balloon. The Vredenburgh shield.is instantaneously detachable but is not slidable. The Corne- , lius patent discloses an escape mechanism for cabin aircraft comprising releasable doors in the cabin floor. This con- struction enables the pilot to drop his passengers and their seats downward. The Cornelius patent does not suggest a slidable or a detachabie cockpit canopy. The Miller patent * discloses spring-operated hinged doors covering a parachute compartment rearward of an open cockpit. The Hall patent discloses a cabin aircraft having a releasable roof hatch abeve each passenger seat.. The several hatches are releas- able simultaneously, but are not slidable. The Alexander, ’ et al. patent di’ loses a cockpit roof windgw slidable in fore and aft directions hy means ef a crank-operated mechanism. The Alexander roof window is not jettisonable. The Smith patent ‘discloses another arrangement | of trapdoors in the _ cabin’ fivor for dropping passengers and their seats down- _ ward. The Pivak patent shows an adjustable cover for | cockpits formed by a series/of arcuate segments, similar to that disclosed in the Logan patent, but the Pivak cover is slidable fore and aft to vyayious positions. This Pivak patent was the subject of an eaylier suit in this court, Joll Perry, formerly J. L.-Pivak, ¥. United States, 112 C. Cs. 1, decided. March 1, 1948, wherein ¢laim 1 of the Pivak patent was held - ‘to be invalid over prior patents. The McCune patent re- acaba . > Da |i he f Ap 31 se e ‘lates to power- y-operated vehicle exit doors. The Helwig pat- ee ent, eited against the.Saulnier application by. the- patent examiner, discloses a safety exit for an aircraft _gunner’s $ compartment -or turret. The exit comprises an airtight ‘ tripdoor secured ‘in the bottom floor. of the gunner’s: com- . partment’ by quick- release latches whic h allow the door to ba jettisoned in an emergency. The Helwig trapdoor is pivot-*— ally supported for non-emergency use, and is not slidable and is not adjustable to various positions during flight. , 17. The British Petters, et al. patent discloses the broad combination of a cockpit canopy slidable in the fore and aft: direction and also instantaneously openable in an emergency. , The conew canopy is ‘not. ‘detachable. Referring to figures 1, 2, and 4 of the British. Petters patent draw- - ings, the pilot’s cockpit a is provided with a fixed wind- - + shield s and a-slidable hood. The slidable‘hood or canopy is _ formed in ‘two parts, d and e, hinged about substantially -. ‘horizontal axes, g and h. The members to which the hinged ' parts are attached are mounted pon fixed guides j and &, whereby the hood may be moved.forward so as to uncover the — cockpit a and enable the pilot to enter or leave the same. In order to secure quick release in an emergency, the two por-, ‘tions d and e of the pilot’s cockpit roof may be thrown open by releasing a quick-release pin m at the inside top of the canopy as shown in figure 2, the ‘open canopy being illus- trated in dotted lines. The gunner’s cockpit } is provided with a roof of the piyoted segment type disclosed in the ; _ Logan and Pivak patents discussed in finding.16. The Brit- 4 ‘ish Petters patent discloses a cockpit roof structure which is | slidable in flight and also instantaneously openable in an” emergency. The British patent does not disclose any details of mechanisms. or handles. for moving the pilot; slidable roof fore and aft on the fixed guide railg4 and *. 18. The British Boulton, et al. patent discl a slidable cockpit canopy construction for aircraft. rring to ; figures 3 and 4 of the Boulton patent drawings, an aircraft 4 cockpit is provided with a fixed windshield 10, a slidable += cockpit roof 14, and a fixed rear roof section 13. The slid- able roof 14 is mounted on rollers 20 positioned in channels 17 and 18, there being one channel on each side of the cockpit. ; j Skt ee ee Sia? Hi behets + % Day * VS = raf ’ ; PETTERS | pier "+ Bratish * 1 412,717 rai Al fig &. - BOULTON British 426,438 | hig # The Boulton patent specification suggests— : . + * . * > Means should be provided for enabling the pilot to —' @ffect the movement. of the sliding component, such as suitable handles affixed thereto, or alternatively a winch and handle, or a quick thread screw. Further suitable ‘ ee ae a a ? - Be locking gears should be provided for retaining the slid- - ing com} “we in either the closed or the open position, or, if desired) in intermediate positions as well. - - Further the attachment of the slidable component of: the cover to the-aircraft through the track mast be such ‘as to-ensure thab it will be securely held- and easily operable under all xonditions of flight ind of the vary- - ing air pressures ae the cover is thereby su — FFs \ * * The British Boulton, paterit Vice loses a roof normally slid- able above a pilot’s coc kpitigen a: capable of being operated when in flight, and suggests mec anical nieans for displac- ing the roof under all conditions of fight which would mean that the displacing means must be operable from inside the cockpit. The Boulton patent does n suggest means for detachably ‘securing the reof 14 to the Supporting lugs 19, figure 3, nor does Said patent suggest that the slidable root . might be jettisonable. 19. As noted in this_court’s apecial findings? of fact in the Jol! Perry case ‘cited above, a Lockheed Sirius airplane, built for Col. Charles A. Lindbergh, flight tested in 1930, and placed ot public exhibition about 1 WS, ine luded a slid- able cockpit canopy. The transparent front canopy Section was Mewnted at its lower sitle edges for sliding movement — on track sections secured adjacent to the top edge of the front cockpit and on the outside thereof. ‘The evidence in the present case does not indicate whether or not the Lock-\ - heed Sirius slidable canopy was jettisonable, nor does it indi- cate the specific means utilized for sliding the eanopy fore . fa amd aft. ~ 20. The Curtiss-Wright Design 75 airplane canopy is de-- . Seribed in a series of affidavits and drawings. Curtiss- Wright drawing 84256, entitled Cabin Assembly—Design 75, dated February 11,1935, shows aslidable cockpit canopy. The design 75 canopy is ‘provided with rollers which engage rails secured to the fuselage. The drawing shows no me- — chanical means for moving the canop? fore and aft;.and does not clearly show that the canopy is jettisonable. Affi- davits made in 1952 by Curtiss-Wright employees state that the design 75 airplane was equipped ir 1935 with a slidable * Findings 35-36, 112 C. Cis. 1, #6. * Defendant's exhibit 13. |: . > ° ' - 35. and sheddable cockpit canopy with crank means to operate, the. ‘canopy and -with locking means to lock the canopy in , various positians.’ Said affiants also stated that the design 75 airplane was flight tested in 1936, that the canopy was jetti- soned intentionally during a flight between August 7 and. — : September 29, 1935, and that the canopy was provided with Jock and release means similar to those used later on P40 type airplanes, This evidence is insufficient ‘to watrant a finding that the design 75 airplane canopy included in 1935 each and all of the elements porns in the —- combina- tions set forth in the claims in suit. ’ 21. The Douglas Aircraft Tre. O-46A airplane canopy is described in affidavits, drawings, and photographs. Doug-.. las Aircraft Company layout drawing 5003684, dated May / 22, 1955, and production ‘drawing 5005 igated August 15, 1935, disclose alternative, locks to secure ; a cockpit. canopy to sliding frame support men : O-46A .cockpit canopies are shown in a series of photo- ; graphs* dated January 1936. Ninety airplanes of the ; O-46A type were deliveredto defendant’s agencies during +. the period February 28, 1936, through March 1, 1937. The. -O-46A canopy comprised four separate sections including a slidable and releasable forward section, then a fixed sec- tion, then two more slidable but non-releasable sections. The ‘evidence shows no mechanical / . was successfully operated and jettisoned prior to December 27, 1935, the filing-date to which piaintiff is entitled (finding 4). Also the evidence is insufficient to warrant a finding that the O-46A canopy construction included prior to said - date each and all ofthe elenents recited in. the: specific a combinations set forth in the patent claims in suit. 22. The evidence as to the Lockheed, Curtiss-Wright, and : Douglas airplane canopy constructions does not warrant a _ \ ~~finding that the subject. matter of the plaintiff's patent - claims in suit was known to or used by others in this coun- ‘\try, or was in public use or on sale in. this country, prior to December 27, 1935. ‘ “* Defendant’ a exhibit 15 A-E inclusive. “ 2 os 0 eans for moving the O-46A | ; _ canopies fore and aft. The evidence is insufficient to war- - : rant a finding that the O-46A airplane canopy construction -- -—The—_- a 36 INVALIDITY? OF CLAIMS 23. Claini 1 recites a three-element combination compris- ing (1) a slidable detachable roof, (2) means for displacing the. roof, and (3) meafs for detaching the roof. . This claim is valid. : | 24. Claim 2 recites a five-element combination comprising broadly (1) a roof,’(2) a slidable support. (3) means to con- | trol the movement of’ said support, (4). means to secure the ‘ roof to the support, and (5) means to release said securing . means. This claim is valid. | - 25. Claim 8 in suit recites a five-element combination simi- lar to that of claim 2, but gpecifies.the support for the slid- able roof as ‘wo carriages on either side of the cockpit. 'This claim is valid. ite ~o) ity . - 26. Claim 4 in suit recites a five-element combination simi- lar to that of claim 3, but specifies two rails carried by the: ° | - airplane body aiong which the two carriages slide, and also specifies registering annular elements carried by the roof ~and carriages together with pins engageable with the annu- lar elements for securing the roof to the carriages. “Thus in claim 4, the claim 2 support for the roof is defined as two rails and two carriages, and the claim 2 means for detachably. securifig the Support and the roof togéther js defined as gn- nular elements engaged by pins. This claim is valid. 27. Claim 6 in suit recites a three-element combination comprising (1) a slidable detachable closing element, (2) means for displacing the closing element, and (3) means for detaching the closing élement. Claim 6: is similar to claim 1 except that it is-broader in that it is not limited to a cockpit roof construction. When claim 6 was added by, amendment to the Saulnier application for patent, counsel ‘for plaintiff wrote: ~*~ ‘ * bd . w, ae. This new claim, * * * differs from claim’1: (with - which it corresponds, * * *) in that it dées not. specif- ically state that the me, element is.a roof cooperat- .- ing with a cockpit. It will be readily unde that the device. according. to the invention could, without. . . any change in the .principle- thereof, be = toa. closing element.eonstituting, for instance, a lateral, or even an under, panel. ies . — eo ee; oie ion . a a , See This claim is valid. . n v:-R @ Claim 7 in sulttrecites a five-elentent combination com-' * ‘prising (1) a-closing element, (2) a slidable support, (3) ‘means for controlling the movement of said support, (4). means derachably securing said support to said closing ele- , ment, and (5) means to release the securing, means. Claim 7.is similar to claim 2 except that it is broader in that it - is not limited to a cece eH roof construction. This claim is valid. sear - ; 7 \.ANCRINGEMENT 29. Plaintiff ¢ ini infringement of the six patent claims ‘in suit by “specific aircraft made for, delivered to, and/or ‘ used by defendant in the period December ‘9, 1948, to De- _~ cember 9 ; 1954. These aircraft, Mlustrated in plaintiff's ex-_ hibits 3 through 8, ancl the claims asserted there against defendant are identified i in the foflowing table: Name , : Maker : . Type’. Patent Clrime Thenderbolt... Republic Aviation - e 47D. ae 133,467 / : ' Corp. eee ‘ ae Thunderjet_._.. Republic Aviation ee 1, 2, 3, 4, 6, . hy Corp: Mustang... ... North American vine P-51D:-.. -1, 2, 3; 6,7 ae ne tion. Tes ‘Scorpion. ..... ‘Northrop Aireraft.... F-89D__._ + 1,2,6,7 Fury..... ‘ Se ne ae eae Fee oleae fa) al ttt te tis — . et, es ” be present in the Sky Raider construction. These addi- 42 supporting roiler trucks and the forward end of the en- . closure frame. An electrical system. including a control switch accessible to the pilot within the cockpit is provided . to detonate the explosive charges and thereby shear pins . allowing the enclosure and -its frame to separate from the. supporting tracks. The force of the explesive charges gives the forward end of the enclosure an upward thrust to jet- tison the entire enclosure. . 42. The Sky Raider aircraft cockpit enclosure construc- ' tion includes a‘ combination of- elements like those’ recited in claim 1 of the patent in suit. These elements in the Sky Raider aircraft function in a similar manner and’ produce a’ similar result te, those recited in said claim. Claim 1 is. - found. to be ‘infringed by the Sky Raider construc- tion. The similar elements and additional elements recited in different language in claims 2, 3, 6, and 7 are also found a! claims are also-found to be infringed by Gofendaats : si Raider aircraft construction. 43. Counsel for the parties have agreed that, during the - accounting phase of this case, if any, plaintiff shall have the right to present evidence as to other aircraft cockpit can- opy constructions embodying: structures ‘allegedly falling within the scope of any claim previously held valid and in- - fringed by the court; and that defendant shall have not less. than ninety (90) days’ notice of any and all such structures -upon which plaintiff intends to rely in said accounting pro-. ceedings, if any, before being required to present evidence on the further issue of infringement thus tendered for trial for the first time during the accounting phase of this case. Plaintiff notified defendant by a letter dated October 24, - 1957, that claims 1 and 6 of the Saulnier patent are also charged to be: intringpd by constructions identified as fol- lows: . a ; Model FOF-2 ANO1-85FG-2 ar Model F9F-4, -5, -5P ANO1-85FGD-2 Model FOF-6, -6P, -7; -8 ANO1-245FBA-2 ; Modei F2H-1 , - ANO1-245FBB-2 Model F2H-2, F2H-2N ANO1-245FBB-2A — . Model F2H-2, '-2P ANO1-245FCA-2 ti. Model F2H-1N Ce OE ER OS et Re re oy ee A : Py 43 No evidence was presentéd at the initial trial of this case as to the construction of the above-identified aircraft. | 44. Under certain Bluim-Byrnes Agreements between the United States and France, the French govetnment has com- © pensated plaintiff, a French citizen owning the United States paterit' here in suit, for certain aircraft canopies procured by the United States prior to September 2, 1945. Said ac- tion of the French government in compensating the Brench - owner of a United States patent was not based on judicial “proceedings coneerned with the issues of patent validity and — infringement now tendered’ in the subject case. Tlie trans- mittal of information by defendant to French /officials con- ’ cerning the cost of some thirty-one thousand canopies pro- cured by defendant during the World War II period does not constitute an admission by defendant that the patent here in suit was considered valid and infringed by such can- opies. .There’is also evidence that the British government . has purchased piaintiff’s British patent said to correspond to plaintiff's French patent upon which the United States patent here in suit is based. There is no evidence that such purchase ofthe British patent was based on judicial proceed- ings concerned with the issues of patent validity and in- fringement now tendered in the subject case. CONCLUSION OF LAW’ s Upon the foregoing findings of fact, which-are made a part of the judgment herein, the court concludes as a matter of law that the plaintiff.is entitled to recover and judgment will be entered to that effect. The ease is remianded. to the trial commissioner, pursuant to Rule 38(c), to determine reasonable and entire’ compensation for defendant’s. un-~ ~ licensed use of plaintiff's patented invention. a ; | "APPENDIX B + , ee é om the inited States ca i aims No. ‘4T1- of (Filed July 4, 1958) . RAYMOND SAULNIER vy, THE UNITED STATES REPORT “GF COMMISSIONER ’ To the ieee the Crier Jcpce AND Associate Jopars OF THE UNIrep. STATES C OURT OF Cuatms : Pursuant to. the order of reference in the above-entitled case, the undersigned Commissioner makes the following — of his findings of fact: ~22. | Findings 1-22 are substantial)’ identical to Find- . ee 1-22 adopted by the Court of Clajms, supra, pp. 20-35. 1. Sa ede * - * yevaisigny OF CLAIMS 23. Claim 1 recites a’ three-element combination. compris- ing (1) a slidable detachable roof, (2) means for displacing the roof, and (3) means for detaching the roof. This broad ¢ three-element combitfation is disclosed, prior to Saulnier’s first effective date, in the British Petters patent discussed in finding 17. In this British patent construction, the . .pilot’s cockpit toof is’ slidable-and is also instantineously - openable for emergency exit by releasing a quick-release pin m at the inside top of the roof. No new or different result is secured by releasing a two-part hinged section roof, ~ which may be torn away by the slip stream} as areca , (45) ° eee: from: releasing and lifting. 4 one-piece roof so that the slip stream will carry it away. In either case the cockpit is instantaneously opeped to allow the pilot ‘to escape or to be . ejected from'the cockpit. Although the Petters patent does ‘not disclose a specific construction of means for displacing the slidable roof structure, the disclosure that the roof is slidablé includes and requires that there be a handle or: .grip or. some other. conventional means by which the slidable roof may be displaced fore and aft. ‘Tlie broad - combination claimed by claim 1 lacks novelty. The in- dividual elements of the claim 1 combinasion were all known. ‘in the prior art. Cockpit roofs normally slidable and cay - able of being operated in flight are shown ‘in’ prior patents such as Sutton, Joyce, Hathorn, Petters, and Boulton. Plaintiff does not deny that slidable cockpit roofs are ofl. Means operative from inside the cockpit for displacing | the cockpit roof are also specifically slrown in prior patents such as Joyce, Hathorn, and Boulton. “The Boulton patent specification even teaches the equivalence of handles, a. winch and handle, or a quick-thread screw for displacing a canopy. Plaintiff's stipulated limitation of his patent claims, noted in finding 87to mechanical means for moving the canopy, 8s distinguished from fixed handles, is immaterial in view of - the Boulton patent teaching of both types. A cockpit ‘roof * detachable instantaneously is shown in prior patents such as Hicks, and Hall, and is shown as openable instantaneously in Petters. Jettisonable closures are also shown in the. Hel- wig patent cited by the patent examiner. . C laim 1 of the patent in suit js-itivalid in rec iting an ald combination of — old elemerits producing no. new or unexpected results. The differences between the recitad of claim 1 and the prior art - patents are such that the subject matter asa whole would — have been obvidus, at the time the Saulnier consffuction ° wes devised, to a person having ordinary skill in the air- : plane cockp*t closure field. 24. Claim 2 recites a five- element combination comprising broadly (1) a roof, (2) ‘a slidable support, (3) means to con-- trol the movement of said support, (4) means to secure the roof to the support, and (5) means to release snid sectring, means. This combination is ‘broadly disclosed, prior to Saulnier’s earliest effective date, in the patents to Joyce, Ha- ‘thorn, Petters. and Boulton. For example, referring to the *- plane. cockpit canopy fi ducing ‘no pew or unexpected results. | 47 i . . . Joyce patent constructian, finding 14, the Joyce pilot's shield | 16 ‘includes a transparent panel 17 mounted -in « frame ts, ~ the latter being secured to supporting plates 19 having rollers 20 to facilitate-sliding movement of the shield fore and aft. The Supporting: plates 19 are obviously secured to the frame. 18 by securing means. Claim 2 here in suit does hot specify any particular type of securing tieans other than that said means detachably secure the elements together: for -instantaneoys release. Such detachable sectiring means are _ old, as illustrated by the holddown clamps 26-27 of Hicks, finding 12, which are instantaneously and simultaneously re- : leasable to quickly detach a roof structure. It would have _ been obvious to a ay Piiep ordinary skill in the air- ett to substitute the Nicks patent releasable holddown clamps for the undescribed securing means between the Joyce patent-roof frame 18 and slidable “upporting plates 19. Likewise: it would have been obvious to one having ordinary skill t@ utilize such releasable hold- down clamps to secure the Hathorn supporting plates 42 ¢o the Hathorn slidable cabin top illustrated hereitbefore. Claim 2 of ‘the patent in suit is invalid in reciting an old ‘combination of old elements producing no new or unexpected results. siete Ceaorey 25. Claim 3 in suit recites a five-element conibinstion simi- lar to that of claim 2, but specifies the support for the slid. ' able roof as tive carriages on either side of the cockpit, Such. “carriages are broadly disclosed in the prior patents of J) oyce, ~ _Hathorn, and Boulton, mentioned above. For example, re- wiinology does not avoid the teaching of the prior patents hoted against claim 2. _Claim 3 of the patent in suit is also: invalid in -reciting.an’ old combination of old elements pro- 26. Claim 4 in-suit recites artive-element combination einri- ‘lar to that of claim 3, but specifies two rails carried by the = ® ; siephans body oles which the two carriages slide, and abet specifies registering annular elements ‘carried by, the roof and carriages together with pins engageable with the anna- lar elements for securing the roof to the carriages. Thus in claim 4, the claim 2 support for the roof is détined as two rails and two carriages, and the claim 2 means for detachably securing the support and the roof together is defined as an-- nular elements engaged "by pias. Supporting carriages and rails on which the carriages.are slidable are broadly dis- -Dyglosed 3 in the prior patents of Joyce, Hathorn, and Boulton. Jeyce shows .channel-shape rails 21. Hathorn, shows rails 21 “Rad 24. Boulton shows channels 17 and 18. The use of _ pins slidable into and out of apertured lugs to provide a de- tachable securing means is disclosed in the prior patents of | Smith. and Hall, identified in. finding 9, Smith describes a pin or bolt carried in a set of guides and provided with an arm engageable with an apertured fiange to retain an air- craft’ trapdoor in place. ‘Hall degeribes a slide boit secured toa slide rod mounted in bearings, the bolt being engageable with an apertured hasp to secure a cover above a pilot's seat. No’ new result flows from making such securing means an- nular. Claim 4-of the patent in suit is invalid in-reciting an old combination of old elements ptoducing no new or unexpected results. , The specific supporting means and the specific securing means~defined in claim 4 involve simple ‘mechanical constructions equivalent structurally and fune- tionally to those taught by prior patents and would have . been obvious to a person having ordinary skill in the air- plane cockpit closure field. 27. Claim 6 in’ snit recites a three- aiiecee combination ~ comprising (1) a slidable détachable closing element, (2) méans ‘for displacing the closing element, and (3) means’ for detaching’ the closing element.. -Claim 6 is similar to claim 1 eacept that it is broader in ghat it is not limited to a cpckpit roof construction. When claim: 6 was added by — amendment to the Saulnier application for patent, counsel for plaintiff wrote : - * Vig * ees * * * This new claim, * * * differs from claim 1 (with e . which it corresponds, * * *) in that it does not Ae aml ically state that the closing element is a roof ¢ rat- ing with a cockpit. It will. be rated understoo ‘that 49. pra? : the device according to the’ invention could, without any change in the principle thereof, be applied to a closing element constituting, for instance a ateral, or even an under, panel. 5 a > . -— * ee; * Claim 6 in suityecites a cditibination broadly old as disclosed . in the British Petters patent. Detachable -closing elements, as distinguished from cockpit roofs, are disclosed in the prior patents to Cornelius, Hall, and Helwig, all identified in finding 9 and discussed in finding ‘16. Claim 6 of the patent. in suit ‘is’ invalid, for the saine reasons noted with referetice to clainy 1, in recitiig an old combination of old elements producing no new op unexpected results. The. ‘ differences between the recital of claim 6 and the prior art — patents are such that the subject matter as a whole wouid have been obvious, at the time the Saulnier construction was devised, to a person having ordingry skill in the airplane’ | fuselage closure field, ; . ‘Sse er, wae 28. Claim 7 in suit recites a five-element combination com. prising (1) a closing element, (2) a slidable. support, (3) means for controling the. movement of said support, (4) means, detachably Securing said support to said closing ele- meht, and (5) means to release thie securing means. Claim 7 is similar to claim 2 except that it is broader in that jt is not limited to a cockpit roof construction, Claim 7 recites & combination broadly old as disclosed in the patents to Joyce, Hathorn, Petters, and Boulton. Statements made in finding 24 with reference to claim 2 also apply to claim 7. Claim, 7 of the patent in suit is invalid ini reciting an old combination of old élements producing no new or tinex pected “results. + ee wes ; ome : 29. "Summarizing, claims 1, 2,°3, 4, 6, aml 7 of the patent in suit are found to be invalid over the diselosures of prior patents (1) in that these patent claitns merely recite old combinations of. old elements“producing no new or un- expected results, and (2) in tliat the differences between ° the terininology of these claims and’ that of the ‘prior art patent are such that the subject matter as a whole would have been obvious, at the time the Saulnier, construction was devised, to'a person having ordinary skill in the field of removable roofs for the cockpits of aircraft. - - am oe. : ‘ z _ aor 30.45. [F lading». 30-45 are wedi identical | to Findings 20-44 Adopted by the Court of Claims, supra, PP. ° -BT-43. ar. ee e a ene es , 7 - i 16. Sumniarizing, patent claims 1, 2, 3,4, 6; and: 7 of the Saulnier patent have been found to be invalid as stated. in - finding 29. In the event that the court alters said finding of patent invalidity, then the accused a raft ‘identified in -, * finding 30 are found to infringe such bf said claims as the court holds valid, as particularly set fo i findings 83, 35, 37; 39, 41, and 43. ° : 2 ‘ ‘Respectfully submitted. * , \, ‘ Donatp E. Lanz, Commissioner, is e ” é e.. is eo — U.S. GOVERNMENT PRINTING OFFICE: 1960 --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386420_0383%3A2. Public record. Not legal advice.