Decca Ltd. v. United States

544 F.2d 1070, 210 Ct. Cl. 546, 191 U.S.P.Q. (BNA) 439, 1976 U.S. Ct. Cl. LEXIS 26
CourtUnited States Court of Claims
DecidedJuly 9, 1976
DocketNo. 299-70
StatusPublished
Cited by51 cases

This text of 544 F.2d 1070 (Decca Ltd. v. United States) is published on Counsel Stack Legal Research, covering United States Court of Claims primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Decca Ltd. v. United States, 544 F.2d 1070, 210 Ct. Cl. 546, 191 U.S.P.Q. (BNA) 439, 1976 U.S. Ct. Cl. LEXIS 26 (cc 1976).

Opinion

Pee Curiam':

This case comes before the court on defend-

ant’s exceptions to the recommended opinion, findings of fact and conclusion of law of former Trial Judge Cooper, submitted in accordance with Pule 184(h), in which he holds that the United States has infringed withim, the United States, claims 1, 4 and 11 of O’Brien, et al., United States Patent No. 2,844,816, and must pay reasonable and entire compensation under 28 U.S.C. Sec. 1498, the -amount thereof being left to future proceedings under Pule 181(c). The alleged infringing device is the United States Government’s worldwide Omega system for positioning ships and aircraft.The case has been submitted to the court on the briefs and arguments of counsel. Upon consideration thereof, since the court agrees with the said recommended decision,, except for one sentence, it -adopts the same as the basis for its decision in this case, except for that sentence, which we have deleted.

[550]*550We agree in 'general with the trial judge’s handling of the extraterritoriality problem, but have eliminated a sentence to avoid giving the impression that we rely on what we believe to be the not unchallengeable proposition, that the territorial requirements of the United States Patent Laws are met simply because United States flag vessels or aircraft, receiving Omega signals while on or over the high seas, are ambulatory portions of United States territory. We think the territorial requirements of our laws are met otherwise in this case, so this juridical prop is not necessary.

The problem arises from the fact that, as held in Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972), United States Patent Laws are territorial in their application and by their own terms are not infringed by acts in foreign countries that would be infringements at home. That case excluded shipment abroad of components of shrimp de-veiners, for assembly there, although they had been held, when assembled at home, to infringe certain United States combination patents. The Court referred to provisions of the Patent Code, 35 U.S.C. Secs. 154 and 271, the former of which makes a United States Patent convey the right to exclude others from making, using, or selling the invention “throughout the United States” and the latter defines infringement as making, using, or selling the invention “within the United States”. By Sec. 100(c) “United States” means “the United States of America, its territories and possessions”. Patent claims, it was said, must moreover be construed strictly in light of “this Nation’s historical antipathy to monopoly”. 406 U.S. at 530.

It has several' times been held that the fiction, as it has been called, that a United States flag vessel is United States territory, does not extend so far as to make general United States laws, enacted for territorial application, and without express reference to shipping, applicable to United States flag ships at sea. United States ex rel. Claussen v. Day, 279 U.S. 398 (1929) ; Cunard S.S. Co. v. Mellon, 262 U.S. 100 (1923); Scharrenberg v. Dollar S.S. Co., 245 U.S. 122 (1917).

' The parties, addressing this problem on inquiries from the bench, seem to have supposed the answer was primarily found in Brown v. Duchesne, 60 U.S. (19 How.) 183 (1857). [551]*551In that case a United States Patent was held not infringed by a device carried as part of the equipment of a French flag vessel to a United States port, because, it was held, an implied exception to the United States Patent Laws existed for that particular situation. Congress could not by its general language have intended to empower patentees to harass and obstruct foreign flag ships in our ports, fitted out in conformity to the patent laws of their own countries, and trading to our ports pursuant to treaties guaranteeing them equal access. That case is quoted and followed in Benz v. Compania Naviera Hidalgo, S.A., 353 U.S. 138, 146 (1957), holding that United States Labor Laws do not apply to labor disputes on board foreign flag vessels during their temporary stays in United States ports.

In the situation of “flag of convenience” ships beneficially owned by United States nationals, but under foreign flags, the Supreme Court has had difficulty, whether and when to imply exceptions to United States Law of this kind. Hellenic Lines Ltd. v. Rhoditis, 398 U.S. 306 (1970); McCulloch v. Sociedad Nacional, 372 U.S. 10 (1963); Lauritzen v. Larsen, 345 U.S. 571 (1953). Sometimes it does so, sometimes not, as these cases illustrate.

In Gardiner v. Howe, 9 Fed. Cas. 1157 (1865), the court held that a United States Patent could be infringed by use on board a United States merchant vessel on the high seas. The court took the view that the United States Patent Laws extended to any place under United States jurisdiction. In Marconi Wireless Tel. Co. v. United States, 99 Ct. Cl. 1 (1942), affirmed in part, vacated in part, 320 U.S. 1 (1943), order on remand, 100 Ct. Cl. 566 (1943), this court followed Gardiner v. Howe, which it deemed, with Brown v. Duchesne, the only available authority, to hold that the Marconi patents were infringed by a group of receivers made and used at the United States Naval Kadio Station at the American Legation in Peking, China. Though not mentioned in the opinion, it is of course well known that the United States then enjoyed extraterritorial rights 'at that location. The applicability of these cases today, to the instant problem, may be deemed questionable, both from their apparent inconsistency with Cunard S.S. Co. v. Mellon and Deepsouth Packing Co. v. [552]*552Laitram Corp., both, supra, and still more, because the definition of “United States” in 35 U.S.C. Sec. 100(c) was only added to the Patent Code by the 1952 revision. See, 2 U.S. Code Cong. & Adm. News (1952) 2394, at 2409. Before then the Patent Laws did not define their own scope in a manner that so plainly confined them to states, territories and possessions. We do not, however, disapprove or overrule Gardiner v. Howe and Marconi Wireless. We only rely on them lightly and with hesitation.

It might be thought — and was in the Marconi case — that an implied exemption of foreign flag shipping from United States Laws, even when in United States ports, might as a logical corollary demand a corresponding extension of the same laws to United States ships, even though at sea or in foreign waters. However, an exception to a statute is always easier to imply than an extension is. Any such proposed extension would have to be considered' on the merits of the case.

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544 F.2d 1070, 210 Ct. Cl. 546, 191 U.S.P.Q. (BNA) 439, 1976 U.S. Ct. Cl. LEXIS 26, Counsel Stack Legal Research, https://law.counselstack.com/opinion/decca-ltd-v-united-states-cc-1976.