
    487 F. 2d 525
    LEONARD A. COHEN v. THE UNITED STATES
    [No. 380-68.
    Decided November 14, 1973]
    
      
      Allen Kirkpatrick, attorney of record for plaintiff.
    
      Donald E. Townsend, with whom was Acting Assistant Attorney General Irving Jaffe, for defendant.
    Before Cowen, Chief Judge, Kashiwa and Bennett, Judges.
    
   Per Curiam :

This case comes before the court on defendant’s motion, filed September 14,1973, that the court adopt as the basis for its judgment in this case the recommended decision, filed August 2,1973, by Trial Judge Hal D. Cooper pursuant to Buie 134(h), plaintiff having on September 19, 1973, filed a response stating no objection to the defendant’s said motion. Upon consideration thereof, without oral argument, since the court agrees with the Trial Judge’s decision, as hereinafter set forth, it hereby grants defendant’s motion and affirms and adopts the decision as the basis for its judgment in this case. Therefore, plaintiff is not entitled to recover and plaintiff’s petition is dismissed.

OPINION OE TRIAL JUDGE

Cooper, Trial Judge:

This is a suit for patent infringement pursuant to 28 U.S.C. § 1498 involving reissue patent No. Be. 26,475, entitled “Composite Space Vehicle.”

By agreement of the parties, the defense of intervening rights under 35 U.S.C. §252 was severed and tried in advance of trial on the issues of validity and infringement. Based on the facts established at that trial, it is concluded that intervening rights have been established and are dis-positive of this case.

Reissue patent No. Re. 26,475, granted October 8, 1968, is a reissue of U.S. Patent No. 3,173,627, granted March 16, 1965. The reissue patent discloses a space vehicle in which the occupant is rotated within the vehicle during periods of extreme acceleration or deceleration about an axis transverse to the direction of the acceleration or deceleration forces. In this way, the effective direction of the acceleration or deceleration forces on the internal organs and 'blood of the occupant is constantly changed, thereby substantially lessening the destructive effect of these forces. Rotation of the occupant is accomplished by providing a rigid support on which the occupant rests, with the support rotationally supported within the space vehicle. The axis of rotation of the rigid support substantially coincides with the longitudinal axis of the occupant.

The first seven claims of the reissue patent are identical to the seven claims appearing in the original patent and are directed to a space vehicle. The reissue patent contains an additional claim, claim 8, that did not appear in the original patent and which is not limited to a space vehicle.

The petition, as amended, alleged infringement of claims 5, 6 and 8 by human centrifuge systems located at various Air Force and NASA installations. Subsequently, plaintiff withdrew claims 5 and 6 from consideration and restricted the accused devices to the human centrifuge employing a special spin capsule installed at the School of Aerospace Medicine, Brooks Air Force Base, San Antonio, Texas. The case proceeded to trial with only claim 8 alleged to be infringed and the Brooks installation as the only accused device.

The accused structure consists of a special spin capsule adapted to be supported on the end of a centrifuge arm. The capsule consists of a cab that is supported for rotation in a circular direction relative to the arm. A seat, on which a human subject is supported, is secured to the floor of the cab. By rotating the centrifuge arm, acceleration and deceleration forces (“g” forces) can be applied to the human in the capsule while, at the same time, the capsule can be spun, thereby permitting study of the effects of spinning on a human while he is subjected to these “g” forces.

The facts as to the Government’s procurement and use of the Brooks centrifuge and the special spin capsule are not in serious dispute. The centrifuge itself was procured in 1963. The special spin capsule was ordered, delivered, installed, acceptance tested, and accepted, all prior to October 8, 1968, the issue date of the reissue patent. There has been no use of the special spin capsule subsequent to October 8,1968; however, the capsule is presently in storage at Brooks.

It is axiomatic that there can be no infringement of a patent prior to its issuance. Gayler v. Wilder, 51 U.S. (10 How.) 477,492 (1850); Coakwell v. United States, 178 Ct. Cl. 654, 372 F. 2d 508 (1967). Nor can there be infringement of a claim added to a reissue patent unless the infringing activities occurred after the reissuance of the patent. Daniel v. O & M Mfg. Co., 105 F. Supp. 336 (S.D. Tex. 1952). See, Sontag Chain Stores Co. v. National Nut Co. of Calif., 310 U.S. 281 (1940); Southern Saw Service v. Pittsburgh-Erie Saw Corp., 239 F. 2d 339 (5th Cir. 1956), cert. denied, 353 U.S. 964 (1957). Since the acts of procurement and use of the accused equipment occurred prior to the reissuance of the patent in suit, those acts cannot as a matter of law give rise to any liability on the part of the Government, even if claim 8 is otherwise valid and infringed.

However, in Coakwell v. United States, supra, it was held that articles procured before the grant of a patent, but available for use after issuance of the patent, constituted an infringing use. See also, Olsson v. United States, 87 Ct. Cl. 642, 25 F. Supp. 495 (1938), cert. denied, 307 U.S. 621 (1939). In this case, there is no dispute that the special spin capsule, although presently disassembled, is available for use with the centrifuge should the Government elect to so use it.

Defendant contends, however, that, by reason of its procurement of the specific accused structure prior to the grant of the reissue patent, it has acquired intervening rights which immunize continued use of that structure from a claim of infringement. The defense of intervening rights is based on 35 U.S.C. § 252 which provides, in pertinent part:

No reissued patent shall abridge or affect the right of any person or his successors in business who made, purchased or used prior to the grant of a reissue anything patented by the reissued patent, to continue the use of, or to sell to others to be used or sold, the specific thing so made, purchased or used, unless the making, using or selling of such thing infringes a valid claim of the reissued patent which was in the original patent. * * *

Under this provision, one who, prior to the grant of a reissue patent, makes or procures or uses something that does not infringe a claim of the original patent, has the right to continue using the specific thing so made, procured or used without regard to the reissue patent. Southern Saw Service v. Pittsburgh-Erie Saw Corp., supra.

This rule of intervening rights is applicable here. Having acquired the accused structure during the intervening period between the original patent and the reissue patent, and there being no allegation of infringement of any of the claims appearing in the original patent, defendant is to be accorded intervening rights as to that structure and is free of liability for its use thereof.

The only remaining matter is defendant’s contention that it should be permitted to repair the spin capsule to restore it to its original operable condition and to use the capsule, as repaired, without liability to plaintiff. Plaintiff concedes that defendant may repair the capsule to the form used prior to October 8,1968, but urges that defendant should not have the right to modify it to any other form. In particular, plaintiff contends that defendant should not be permitted, under the guise of “repair,” to modify the capsule so that the back rest of the seat, in an upright position, is at less than 13° to the vertical.

The doctrine of intervening rights, as set forth in 35 U.S.C. § 252, is limited to the “specific thing” purchased or used prior to grant of the reissue patent. This doctrine does not authorize the modification of that “thing” to a different form. Nor has defendant presented any evidence that would indicate that, for it to protect its investment in the spin capsule, modifications of any kind are required. Accordingly, to the extent defendant premises its right to use the spin capsule without liability to plaintiff on the defense of intervening rights, it must restrict its repair of the capsule to the arrangement in which it was procured, z.e., with the back rest of the seat at an inclination of 13° to the vertical.

In summary, it is concluded that, being possessed of intervening rights in the accused special spin capsule, defendant has the right to repair it to the form in which it was originally procured and to use it in that form for its originally intended purpose, subject only to the requirement that its use does not infringe an original valid claim of patent No. 3,173,627 which is incorporated into the reissue patent in suit.

Intervening rights being dispositive as to the only device accused, there is no need for a further trial to determine whether claim 8 is valid and, if so, infringed.

The petition must be dismissed.

MNDINGS OE EAOT

1. The patent in suit is reissue patent No. Re. 26,475, issued to plaintiff on October 8, 1968, on an application filed March 14, 1967. That reissue patent is based on U.S. Patent No. 3,173,627, dated March 16,1965.

2. The reissue patent discloses a space vehicle in which the occupant is rotated within the vehicle during periods of extreme acceleration or deceleration about an axis transverse to the direction of the acceleration or deceleration forces. In this way, the effective direction of the acceleration or deceleration forces on the internal organs and blood of the occupant is constantly changed, thereby substantially lessening the destructive effect of these forces. Rotation of the occupant is accomplished by providing a rigid support on which the occupant rests, with the support rotationally supported within the space vehicle. The axis of rotation of the rigid support substantially coincides with the longitudinal axis of the occupant.

3. Each of the first seven claims appearing in the reissue patent also appeared in the original TJ.S. Patent No. 3,173,627. Only claim 8 of the reissue patent did not appear in that original patent, appearing for the first time in the reissue patent.

4. Claim 8 of the reissue patent is the only claim asserted to be infringed and provides as follows:

8. Apparatus including support means for fixedly and, firmly supporting a human thereon comprising a rigid support member and means for clamping the human with respect to the rigid support member for movement therewith, means for moving said apparatus so as to cause a predetermined force to be imparted by the support means upon the human, and means for imparting rotational movement to said support means and Ivu/mam thereon about an axis perpendicular to the direction of said force and which axis substantially coincides with the longitudinal axis of a human fixed on the support so as to impart a continuing change in the direction of the force with respect to the human.

5. The facilities of the School of Aerospace Medicine at Brooks Air Force Base, San Antonio, Texas, include a human centrifuge apparatus. That centrifuge apparatus was procured in 1963. As a part of the procurement of that apparatus, there was also procured a gondola structure adapted to be received at the outer end of the centrifuge arm. The gondola structure is not accused to he an infringement of the patent in suit.

6. Under Air Force Contract No. AF 41 (609)-2436, dated June 1, 1964, the School of Aerospace Medicine procured from The Rucker Company a special spin capsule for use with the ¡human centrifuge. This special spin capsule was and •is adapted to be used in lieu of the gondola. The capsule consists of a cab in which a seat is mounted. The entire cab is supported for rotation in a circular direction through 360°. The seat, which is received in the cab, is secured by tracks to the floor of the cab, and the back rest of the seat normally forms an angle of approximately 13° with the vertical.

7. The special spin capsule procured from The Sucker Company, as assembled and used in the human centrifuge apparatus at the 'School of Aerospace Medicine, is the only apparatus accused to be an infringement of claim 8.

8. Procurement of the special spin capsule was initiated when a request for proposals was submitted to prospective suppliers. The Euefcer Company submitted its proposal on Maroh 27, 1964, and the contract for the spin capsule was awarded to The Sucker Company on June 1,1964. That contract was for the design, fabrication, installation, and checkout of the capsule by The Sucker Company.

9. By June 1965, the design and fabrication of the spin capsule had been completed and it had been delivered to Brooks Air Force Base. By July 1965, the fabrication of the capsule had been approved by defendant. However, operational testing of the capsule had revealed certain discrepancies which required return of the capsule to The Sucker Company for modification. The spin capsule was not placed in operation such that an occupant was rotated within the capsule until 1966. In 1966 The Sucker Company returned the special spin capsule to Brooks Air Force Base and, at that time, final installation, checkout and testing were conducted.

10. Official notification of acceptance of the capsule was issued to The Sucker Company on August 22,1966, and final payment to Sucker for the capsule was made on September 6, 1966.

11. Acceptance testing of the special spin capsule was conducted by The Sucker Company at Brooks Air Force Base. At the time of the acceptance testing, an occupant was seated in the capsule. The capsule was attached to the end of the centrifuge arm. The centrifuge arm was rotated and, at the same time, the capsule was spun.

12. Upon completion of acceptance testing in 1966, the special spin capsule was removed from the human centrifuge and was retained in storage in Building 170 at Brooks Air Force Base until approximately 1970, at which time the capsule was placed in outdoor storage. The evidence indicates that, at the present time, approximately 4 to 6 months would be required to rewire the capsule and otherwise place it in operational condition. However, the seat and the hardware comprising the capsule itself are present at Brooks Air Force Base and are available for use by the School of Aerospace Medicine.

13. During the acceptance testing, and so far as appears from the record, at all pertinent times when the spin capsule was used, the back rest of the seat in which the occupant rests did not approach the vertical any closer than the 18° inclination.

14. The special spin capsule has not been operated with the human centrifuge apparatus since completion of acceptance testing in 1966.

CONCLUSION OF LAW

Upon the foregoing findings of fact and opinion, which are adopted by the court and made a part of the judgment herein, the court concludes as a matter of law that plaintiff is not entitled to recover, and plaintiff’s petition is dismissed. 
      
       The petition, as amended, also alleged a claim for compensation tinder 28 U.S.C. § 1491, asserting violation of an Implied contract between plaintiff and defendant. No proof was offered In support of that claim and the parties have agreed that aspect of the case may be dismissed with prejudice.
     
      
       This would require reassembly oí the seat Into the capsule, replacing the wiring and reconnecting the hydraulic system and instrumentation.
     
      
       The 13° inclination apparently is important to the issue of infringement. With the back rest at a vertical position, the axis of rotation of the capsule would coincide with the longitudinal axis of the human occupant and it is this concept that plaintiff alleges to have invented. With a 13° inclination to the bach rest, the axis of rotation of the capsule and the long axis of the occupant are no longer exactly coincident. In a paper filed subsequent to the trial, plaintiff now suggests that the spin capsule mav not infringe even claim 8 when used with a seat having a back rest at a 13* inclination.
     