Hughes Aircraft Co. v. United States

15 Cl. Ct. 267, 8 U.S.P.Q. 2d (BNA) 1580, 1988 U.S. Claims LEXIS 129, 1988 WL 82749
CourtUnited States Court of Claims
DecidedAugust 10, 1988
DocketNo. 426-73
StatusPublished
Cited by4 cases

This text of 15 Cl. Ct. 267 (Hughes Aircraft Co. 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
Hughes Aircraft Co. v. United States, 15 Cl. Ct. 267, 8 U.S.P.Q. 2d (BNA) 1580, 1988 U.S. Claims LEXIS 129, 1988 WL 82749 (cc 1988).

Opinion

OPINION

TURNER, Judge.

Hughes Aircraft Company, owner of U.S. Patent No. 3,758,051 (the Williams patent),1 claims entitlement to compensation pursuant to 28 U.S.C. § 1498 by reason of defendant’s alleged use of the patent in 108 spacecraft. Hughes seeks damages in excess of three billion dollars.

Hughes filed its complaint in 1973; since then a lengthy, complex and costly litigation has ensued at trial and appellate levels. In 1983, the United States Court of Appeals for the Federal Circuit held that the Williams patent was valid and infringed by specific originally accused spacecraft and remanded the case to this court for a determination of damages owed to Hughes. Hughes Aircraft Co. v. United States, 717 F.2d 1351 (Fed.Cir.1983). Trial of the current phase of the litigation, involving a determination of damages for uses already adjudged to constitute infringement and a determination of liability and damages for Hughes’ newer, additional allegations of infringement, began on February 2, 1988.

On January 27, 1988, defendant filed a motion pursuant to 28 U.S.C. § 2515(b) for a new trial on the issue of validity of the Williams patent. Defendant asserts that a new trial is warranted because newly discovered evidence renders the patent invalid pursuant to 35 U.S.C. §§ 102(a) and 103.

This opinion addresses the motion for a new trial and supplements the decision rendered from the bench on June 16, 1988 (trial transcript, pp. 6541-56) and paragraph 2 of an order entered June 22, 1988 memorializing the decision.

I

The new evidence that defendant has discovered,2 and on which it bases the new trial motion, is an article written by R.G. McCarty entitled “Designing small space payloads” and appearing in the May 1959 issue of Astronautics magazine. The article discusses the need to reduce the costs of space research by designing experiments and equipment that “exploit ... the unique [269]*269properties of the space environment.” McCarty describes various experiments at the U.S. Naval Ordinance Test Station, some completed and others in the planning stages, that were conceived with these principles in mind. The first experiment described involves a spin stabilized optical telescope designed to scan for Air Force lunar probes. He then discusses a scanner “under development” that includes a precession system.3 Precession in such a scanning space vehicle would be accomplished by a magnet which would interact with the earth’s magnetic field. This interaction would impart a torque to the system, reorienting the spacecraft. McCarty then states: “There are plans to carry this development further if preliminary results justify detailed exploration of some particular portions of the sky. [A designated] drawing ... illustrates the design of a controllable spinning telescope.”

McCarty expands on this thought, under a subheading entitled “Ground Control Test.” He states:

Initially, it is planned to test this device without attempting to vary the spin (or telescope) axis. The data, then, will give detailed information on only a small circular portion of the sky — a portion equal to the total field of view. Upon completion of that phase, an attempt will be made to include a precession system that can be controlled from the ground. The precession motor under design uses a high pressure gas emitted from a nozzle parallel to, but offset from, the spin axis. To achieve precession, small short bursts of thrust are delivered at the right time in each spin cycle to cause precession in the desired direction. [Emphasis added.]

McCarty then adds: “Achievement of this goal is not expected to be easy.”

II

Defendant seeks a new trial pursuant to 28 U.S.C. § 2515(b) which states:

[The United States Claims Court], at any time while any suit is pending before it, or after proceedings for review have been instituted, or within two years after the final disposition of the suit, may grant the United States a new trial and stay the payment of any judgment upon satisfactory evidence, cumulative or otherwise, that any fraud, wrong, or injustice has been done the United States.

Defendant argues that it need show at this juncture only a prima facie case (albeit by clear, convincing and unequivocal proof) that an injustice will be done unless the defendant is granted a new trial on the issue of the validity of the Williams patent. Defendant cites Purcell Envelope Co. v. United States, 48 Ct.Cl. 66, 70, (1913); Goodrich v. United States, 48 Ct.Cl. 61, 64 (1913); and Henry v. United States, 15 Ct.Cl. 162, 165 (1879) as authority for the proposition that it need only show a prima facie case. The more recent precedent, however, makes no mention of a prima fade standard. See Badowski v. United States, 143 Ct.Cl. 23, 25-26 (1958) (defendant must show by clear, unequivocal and convincing proof that an injustice has been done before a new trial will be granted). See also Young v. United States, 95 U.S. (5 Otto) 641, 24 L.Ed. 467 (1877) (motion for a new trial should be granted “if the evidence submitted ... is sufficient to satisfy that court that ‘fraud, wrong, or injustice’ had been done to the United States”) (emphasis added).

Badowski is more recent precedent and better reflects the statutory language that a new trial be granted “upon satisfactory evidence.” It therefore announces the appropriate standard for review: the defendant must show by clear, convincing and unequivocal proof that an injustice has been done to the United States before the defendant’s motion for a new trial will be granted.

[270]*270III

The defendant makes two arguments in its motion for a new trial. First, the defendant argues that the McCarty article anticipates the Williams patent, rendering it invalid pursuant to 35 U.S.C. § 102(a). Second, defendant asserts that even if there is no anticipation, Williams’ claimed invention would have been obvious in light of McCarty and other relevant prior art and is therefore invalid pursuant to 35 U.S. C. § 103.

A. ANTICIPATION

Title 35 U.S.C. § 102(a) states:

A person shall be entitled to a patent unless — (a) the invention was known or used by others in this country, or ... described in a printed publication ... before the invention thereof by the applicant for patent....

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15 Cl. Ct. 267, 8 U.S.P.Q. 2d (BNA) 1580, 1988 U.S. Claims LEXIS 129, 1988 WL 82749, Counsel Stack Legal Research, https://law.counselstack.com/opinion/hughes-aircraft-co-v-united-states-cc-1988.