
    372 F. 2d 498
    LOUIS C. STUKENBORG, HAROLD V. UTTERBACK AND ASSOCIATED AIRCRAFT INDUSTRIES, INC. v. THE UNITED STATES
    [No. 298-61.
    Decided February 17, 1967]
    
      
      Alfred O. Aurioh, attorney of record, for plaintiff. Thomas L. Cantrell, of counsel.
    
      Alfred B. Engelberg, with, whom was Assistant Attorney General Barefoot Banders, for defendant.
    Before CoweN, Chief Judge, Labamobe, Dueeee, Davis, ColliNS, Skelton and Nichols, Judges.
    
    
      
       By order of January 30, 1967, after submission of the commissioner’s opinion and the argument and submission of the case to the court, upon consent of defendant, the court granted plaintiffs’ motion to substitute Associated Aircraft Industries, a partnership comprised of Elmer S. Eddins, James D. Nunnally, David A. Nunnally, Alice N. Smith and Betty G. Nease, as a party plaintiff in place of Associated Aircraft Industries, Inc.
    
   Pee Cubiam ;

This case was referred to Trial Commissioner Donald E. Lane with directions to make findings of fact and recommendation for conclusions of law. The commissioner has done so in an opinion and report filed on May 5, 1966. Plaintiff has filed no exceptions to the commissioner’s findings or opinion and the defendant excepts only to some of the commissioner’s findings and conclusions. The case has been submitted to the court on oral argument of counsel and the briefs of the parties. Since the court is in agreement with the opinion, findings and recommendation of the commissioner, with one slight additional modification, it hereby adopts the same, as modified, as the basis for its judgment in this case, as hereinafter set forth. Therefore it is concluded that claims 3 and 5 of patent 2,580,482 are invalid, that claims 1, 2, 4, 6, 8, 9, 14, 15 and 16 of patent 2,580,482 are valid but have not been infringed by the defendant, that claims 5, 6 and 7 of patent 2,843,408 are valid and have been used by defendant without license from the patent owner, and that plaintiffs are entitled to recover for such use. Judgment is entered to that effect with the amount of recovery to be determined pursuant to Eule 47 (c) (2).

OpiNiok op Commissioner

Lane, Commissioner:

This is a patent suit under Title 28 U.S.C. § 1498, in which plaintiffs seek to recover reasonable and entire compensation for the unauthorized use or manufacture by or for the defendant of patented inventions. Plaintiffs allege infringement of claims 1-6, 8, 9, and 14-16 of U.S. Letters Patent No. 2,580,482 entitled “Tumbuckle Lock” which issued to the plaintiffs Louis C. Stukenborg and Harold V. Utterback January 1, 1952, on an application filed July 12, 1945. Plaintiffs further allege infringement of claims 5, 6, and 7 of U.S. Letters Patent No. 2,848,408 entitled “Lock for Tumbuckle” issued to Stukenborg July 15, 1958, on an application filed June 27, 1956. Plaintiffs Stukenborg and Utterback are the owners of said patents. Plaintiff, Associated Aircraft Industries, Inc., is the exclusive licensee with the right to grant sub-licenses under said patents. The parties have agreed to defer trial of any accounting issues until the issues of patent infringement and patent validity are decided.

It is found that claims 3 and 5 of the '482 patent are invalid and that claims 1, 2, 4, 6, 8, 9, and 14-16 of the '482 patent are valid but not infringed. It is further found that claims 5, 6, and 7 of the '408 patent are valid and infringed.

Both patents in suit describe and claim improved tum-buckle assemblies. A tumbuckle assembly is an adjustable connector generally used to interconnect cables, wires, or rods so that the length and tension of the cables, wires, or rods may be readily adjusted. A tumbuckle assembly of the type involved in this suit is illustrated in the accompanying drawing. A conventional tumbuckle assembly is comprised of a cylindrical barrel or sleeve having terminal rods threaded in each end. Since World War I, tumbuckle assemblies have been used extensively in aircraft primary and secondary flight control systems for interconnecting and adjusting the length and tension of control cables. For example, the B-52 airplane has over 100 tumbuckle assemblies mounted therein. One of the principal objections to the use of tumbuckle assemblies in flight control systems has been that the barrel or sleeve portion of the assembly has a natural tendency to unscrew, causing the cables to become loose or disconnected. To prevent the unscrewing of the barrel once the tumbuckle was properly adjusted, the aircraft industry adopted a somewhat elaborate method of wrapping the conventional tumbuckle assembly with locking wire. At least one airplane crash has been attributed to the breaking of the locking wire and the subsequent unscrewing of the tumbuckle barrel. After a period of use, a control cable becomes stretched and requires periodic retensioning. Many of the tumbuckle assemblies are located in remote locations in an airplane, requiring a skilled mechanic, sometimes using only one hand, to unwrap locking wire on the tumbuckle assembly, adjust the cable tension, and then to rewrap the assembly. The average time required to adjust the tension of a control cable by this method is from 10 to 80 minutes. The aircraft industry has been continuously seeking a tumbuckle assembly that was more reliable and less expensive to maintain. During the 1940’s the industry evaluated over 21 proposed devices. None of these was found to be sufficiently better to warrant a change.

In 1944 Stukenborg, while working in a machine shop that made conventional tumbuckle assembly parts, developed several tumbuckle assemblies which eliminated the need to wrap the tumbuckle assemblies with locking wire. In 1945 a patent application was filed by Stukenborg and Utterback that issued in 1952 as the '482 patent here in suit.

Fig. 1 of the '482 patent shows a tumbuckle assembly in which the tumbuckle rods have longitudinal grooves cut therein at a depth greater than the depth of the threads, and the barrel has radial notches formed in its ends. A somewhat U-shaped locking member or clip is positioned with one leg of the member in the rod groove and the base of the locking member engaging the barrel in a radial notch. In this embodiment the base of the locking clip is the primary locking member preventing the barrel from rotating relative to the

rods. In Fig. 6A, however, the longitudinal grooves in the rods are grooved to the depth of the threads only, and a longitudinal groove is cut in the threads of the barrel so that when the rod and barrel longitudinal grooves are aimed they form a longitudinal aperture in which is positioned one leg of the locking clip. In this embodiment the leg of the lockring clip is the primary locking member preventing the rotation of the barrel in relation to the rods. After the patent issued, an exclusive license was granted by the patentees to the plaintiff, Associated Aircraft Industries, Inc. At first personnel of Associated attempted without success to sell turnbuckle assemblies that were similar to the assembly shown in Fig. 1 of the '482 patent. In 1953, Associated had limited success in selling turnbuckle assemblies similar to that shown in Fig. 6A of the '482 patent. Even though many of the engineers in the aircraft industry were enthusiastic about the new turnbuckle assembly, its safety and reliability were questioned because it was thought that the locking clip could possibly vibrate from engagement with the other turnbuckle parts and that the clip could be pulled from the assembly by a pull of less than 15 pounds. Associated contracted with an independent testing laboratory to test the new turnbuckle assembly. At the completion of the favorable tests, the test reports were sent to the aircraft manufacturers. The Glen L. Martin Company conducted an analysis to compare what was by then generally referred to as the “Stukelock” turnbuckle assembly with the conventional assembly. Martin found that it took an average of 15 minutes to adjust the conventional turnbuckle whereas it took less than a minute to adjust the “Stuke-lock” assembly. Martin estimated that this time saving would transpose into a saving of $1.50 per assembly in the initial installation of the assembly into the airplane and an additional saving of $2.25 every time the assembly was adjusted thereafter. It was also found that the “Stukelock” turnbuckle assembly was more reliable because the locking feature could withstand a substantially greater torsional force. Meanwhile, Stukenborg was attempting to develop a method of securing the clip more firmly to the other turnbuckle parts. In 1956, he filed a patent application on an improvement to the original device, which incorporated a new clip that could be readily secured to the other parts. The patent issued in 1958 as the '408 patent, in which claims 1-4 (not here in issue) are directed toward the improved clip and claims 5-7 are directed to the improved turnbuckle assembly.

In 1956 tbe aircraft industry approved tbe use of tbe “Stukelock” tumbuckle assembly and assigned NAS numbers 645-651 to tbe component parts and 1074 to tbe complete tumbuckle assemblies. Soon thereafter tbe military approved tbeir use. By 1961 it was required that all new aircraft furnished to the Department of Defense make use of the “Stukelock” tumbuckle assemblies (NAS 1074).

As an affirmative defense to tbe plaintiff’s charge of infringement the defendant contends that tbe patent claims placed in issue by tbe plaintiffs are invalid on the ground that the inventions recited therein are unpatentable in view of the prior art available at the time the inventions were made.

In support of its contention, the defendant directs the court’s attention to four prior art patents set forth in finding 16. Defendant’s expert witness placed particular emphasis on the German 747,256 patent as anticipating the '482 patent claims in issue. The German patent discloses a tum-buckle assembly very much like that shown in Fig. 6 A of the '482 patent, in which the barrel has a longitudinal groove formed in its threads and the rods have longitudinal grooves cut in their threads. A U-shaped clip has one leg inserted into the longitudinal aperture formed by the alined rod and barrel grooves. It is concluded that claims 3 and 5 of the '482 patent read on the tumbuckle assembly disclosed in the German patent and are thereby invalid. The German patent does not, however, disclose or suggest that the longitudinal groove in the barrel be deleted and the depth of the rod grooves be increased to accommodate the leg of the clip. Nor does the German patent suggest that a radial groove be cut in the ends of the barrel. It is found that the German patent and the other references cited by the defendant neither singly nor collectively anticipate the invention recited in claims 1, 2, 4, 6, 8, 9, 14, 15, and 16 of the '482 patent.

With reference to the '408 patent the defendant contends that it would have been obvious to one skilled in the art in 1956 to form the clip disclosed in the German patent in the same manner as disclosed and claimed in the '408 patent. Defendant cites the TT.S. Patent No. 2,353,795, issued to Tinnerman, to support this contention. The Tinnerman patent discloses a locking fastener for locking one member such, as a radio condenser container to a supporting member or panel having apertures therein. The fastener is made from a flat metal strip, one end of which is attached to the container and the other end of which is formed to define a V-shaped holding portion which when inserted through the aperture in the supporting member springs outwardly enabling one leg of the holding member to engage the underneath surface of the supporting panel, thereby fastening the container to the supporting panel. To modify the strip fastener disclosed in the Tinnerman patent to correspond to the clip disclosed and claimed in the '408 patent would require that the fastener be substantially changed in shape and structure and then taken from an unanalogous art and applied in cooperation with the other turnbuckle components in the same manner as disclosed in the '408 patent. Such a modification would not have been obvious to one skilled in the art in 1956 unless the '408 patent was used as a blueprint. Both the German and Tinnerman patents issued in 1944, which is 12 years prior to the time that Stukenborg, after making many modifications, developed the commercially successful invention recited in the '408 patent. It is concluded that claims 5, 6, and 7 of the '408 patent are valid.

Now turning to the issue of infringement, the plaintiffs allege that the defendant, by using some of the NAS 1074 turnbuckle assemblies that the defendant had in its inventory, infringed the patent claims placed in issue. In applying the claims in the same manner as was done in determining their validity, it is concluded that claims 5, 6, and 7 of the '408 patent read on the NAS 1074 turnbuckle assembly, but that claims 1, 2, 4, 6, 8, 9, and 14-16 of the '482 patent do not.

The plaintiffs allege that the defendant has committed acts of infringement by: (1) using NAS turnbuckle assemblies that were purchased by the airplane manufacturers from unlicensed sources and furnished to the defendant as part of the original airplane equipment; (2) using NAS 1074 turnbuckles that originally came from licensed sources and which have subsequently had parts replaced with parts purchased by the defendant from unlicensed suppliers; and (8) using NAS turnbuckles that have been assembled entirely from turnbuckle components purchased by the defendant in which all the components except the clips (NAS 651) originated from unlicensed suppliers.

The plaintiffs have failed to show that any of the NAS 1074 turnbuckles furnished to the Government as original airplane equipment were purchased by the airplane manufacturers from unlicensed sources.

There is no evidence that the defendant has purchased complete NAS 1074 turnbuckle assemblies from unlicensed sources. The defendant, however, has purchased a varied amount of the component parts. Since 1960 the defendant has purchased 805 clevis rod ends (NAS 645), 260 eye ends (NAS 648), 40,990 wire rope stud terminals (NAS 650), and 2,755 turnbuckle barrels (NAS 649) from unlicensed suppliers. During the same period the defendant purchased 109,675 clips from licensed sources. From these component parts 2,755 NAS 1074 turnbuckle assemblies could be constructed.

It is clear that the defendant purchased the NAS turnbuckle components to (1) assemble the components to make complete NAS 1074 turnbuckle assemblies for replacing the conventional wire-wrapped turnbuckles (AN 10482) and the original NAS 1074 turnbuckles furnished by the airplane manufacturer on an “as required” basis, and (2) replace like parts. Each time a NAS 1074 turnbuckle is adjusted the clips are removed and discarded and new clips are installed. It is also customary that when a cable becomes frayed or damaged, the terminal (NAS 650) affixed to the cable is disconnected from the turnbuckle barrel, the terminal and cable are discarded, and a new terminal and cable length are installed. It is rare that the turnbuckle barrel by itself needs to be replaced. This is the principal reason the defendant purchased 109,675 clips (NAS 651) and 40,990 terminals (NAS 650) as compared to only 2,755 barrels.

Plaintiffs urge that when one of the components purchased from the unlicensed suppliers is used in a turnbuckle assembly the defendant infringes on the theory that in effect a new turnbuckle assembly has been constructed.

Under tbe patent law doctrine of repair or reconstruction, if a device is reconstructed it takes on tbe nature of a new infringing device, whereas, if the device is merely repaired, it does not take on tbe nature of a new device. See Marconi Wireless Tel. Co. of America v. United States, 99 Ct. Cl. 1 (1942), modified on other grounds, 320 U.S. 1.

In the recent Supreme Court case, Aro Mfg. Co., Inc. v. Convertible Top Replacement Co., Inc., 365 U.S. 336, 128 USPQ 354 (1961), referred to as “Aro I,” tbe court held tbe replacement of the fabric of an automobile convertible top was a repair of the patented device and not a reconstruction where tbe patent claims were directed to a combination of three elements, a flexible top fabric, supporting structure, and a mechanism for sealing tbe fabric against the side of tbe automobile. The court states at page 345 that—

No element, not itself separately patented, that constitutes one of tbe elements of a combination patent is entitled to patent monopoly, however essential it may be to tbe patented combination and no matter bow costly or difficult replacement may be. * * *

and at page 346 that—

Tbe decisions of this Court require tbe conclusion that reconstruction of a patented entity, comprised of un-patented elements, is limited to such a true reconstruction of the entity as to “in fact make a new article * *

In applying these principles to tbe present case, it is concluded that when a turnbuckle barrel or terminal is replaced, the resulting turnbuckle assembly is not reconstructed within the meaning of patent law. Therefore, it is held that when the unpatented turnbuckle barrels and terminals purchased by the defendant from unlicensed sources are used to replace like parts in turnbuckle assemblies originally purchased from authorized suppliers, the defendant does not infringe the combination claims 5, 6, and 7 of the '408 patent.

With reference to plaintiffs’ allegation that defendant has committed acts of infringement by using NAS 1074 turnbuckle assemblies entirely constructed from the component parts purchased by the defendant previously mentioned, the defendant replies that it has an implied license to use the assembled turnbucldes. Defendant reasons that since it purchased the clips from a licensed source and that the only use of the clips 'is in NAS 1074 turnbuckle assemblies, it received an implied license to use said assemblies, even though the other parts that make up the complete assemblies were purchased from unlicensed sources. The clips cost approximately 4 cents each, and a complete turnbuckle assembly costs between $1.50 and $20.00 depending upon its size.

Each claim of a patent gives to the patentee an exclusive right. The mere fact that a person has an implied license to use a device that is covered by one set of claims does not give the person an implied license to use the device in combination with other devices in which the combination is covered by another set of claims. In the famous “Chicken Plucking Machine” cases, the patent contained claims directed to a new chicken plucking machine and other claims directed to new plucking fingers that were contained in the machine. The infringers purchased the fingers from licensed sources and placed them in a machine purchased from unlicensed sources. The infringers argued that by purchasing the fingers which were covered by one group of claims they also obtained a license under the machine claims. The courts held that the infringers received no such license. The defendant could have used the fingers as replacement parts in machines purchased from licensed sources. Hunt v. Armour & Co., 185 F. 2d 722, 88 USPQ 53 (7th Cir. 1950) ; Priebe & Sons Co. v. Hunt, 188 F. 2d 880, 89 USPQ 299 (8th Cir. 1951), cert. dismissed, 342 U.S. 801. See Radio Corporation of America v. Andrea, 90 F. 2d 612, 34 USPQ 312 (2d Cir. 1937).

It is clear in this case that the defendant intends to use most of the clips that it purchased as replacement clips for the clips that are discarded each time one of the turnbuckle assemblies furnished by the airplane manufacturer is adjusted. It is difficult for the defendant to argue that the only way the clips can be used is in combination with the components purchased from unlicensed sources. Nor is the defendant correct in its belated assertion that claims 1-4 of the '408 patent (the clip claims which are not in suit) involve the same invention as claims 5-7, the combination claims on which, plaintiff does sue. It is concluded that the defendant does not have an implied license to use NAS 1074 turnbuckle assemblies constructed entirely from the component parts that the defendant purchased.

Although the plaintiffs have not directly shown that the defendant has constructed any NAS 1074 -turnbuckle assemblies entirely from the component parts that it purchased, it is found from the facts that defendant has purchased and used more than one of each part necessary to make a complete assembly and intended to make a complete assembly from the component parts, that there has been infringement. The extent of this infringement should be determined in further proceedings pursuant to Eule 47(c). The rights of the coplaintiffs may be determined in the accounting.

FINDINGS on Fact

1. This is a patent suit arising under the provisions of Title 28 U.S.C. § 1498 for reasonable and entire compensation for unauthorized use or manufacture by or for the United States of articles of manufacture embodying inventions disclosed and claimed in U.S. Letters Patent No. 2,580,482 and No. 2,843,408 issued to plaintiffs Louis C. Stukenborg and Harold V. Utterback. Patent '482 entitled “Turnbuckle Lock” issued January 1, 1952, based on an application filed July 12, 1945. Patent '408 entitled “Lock for Turnbuckle” issued July 15, 1958, based on an application filed June 27, 1956.

2. Plaintiff, Associated Aircraft Industries, Inc., is a corporation organized under the laws of the State of Tennessee having its principal place of business in Memphis, Tennessee. Stukenborg and Utterback, the owners of the patent in suit, granted Associated an exclusive license with the right to grant sub-licenses under said patents.

3. The parties agreed at pretrial to defer the trial of any accounting issues until the issues of patent infringement and patent validity were resolved by the court.

4. Both patents in suit involved improvements in the construction of turnbuckle assemblies. A turnbuckle assembly is an adjustable connector used generally for interconnecting cables, wires, or rods so that tlie length and tension of the cables, wires, or rods may be readily adjusted. A turnbuckle assembly includes two threaded terminal rods attached to cables and screwed into the opposite ends of a cylindrical threaded barrel or sleeve. One end of the barrel has internal right-hand threads that receive the exterior right-hand threads of one of the terminal rods. The other end of the barrel has internal left-hand threads that receive the exterior left-hand threads of the other terminal rods. To adjust the length and tension of the connected cables, the barrel is rotated in relation to the terminal rods causing the terminal rods to move axially either towards each other, thereby increasing the cable tension, or away from each other, thereby decreasing the cable tension, depending upon in which direction the barrel is rotated. Generally the turnbuckle barrel has two diametrically opposed apertures formed in the middle of the barrel to receive a tool for applying sufficient torque to the barrel to draw the attached cables to a taut condition.

5. Since World War I, turnbuckle assemblies have been used extensively in aircraft primary and secondary flight control systems for means for connecting and adjusting the tension of the flight control cables. For example, the B-52 airplane has over 100 turnbuckle assemblies mounted therein. One of the principal objections to the use of turnbuckle assemblies in flight control systems has been the natural tendency of the barrel to unscrew, causing the cables to become loose or disconnected. This condition is further accented by the airplane vibrations which are transmitted to the barrel. In efforts to prevent the unscrewing of the barrel once the

cable tension was properly adjusted, the aircraft industry adopted a technique of wrapping the assembly with lock wire, as shown in the accompanying illustration. The wrapped lock wire extends through an aperture in the outer end eye of one terminal, through the barrel aperture, and then through an aperture in the outer end of the other terminal.

6. The control cables after a period of use become stretched and require periodic retensioning by adjustment of the turnbuckle assembly. Many turnbuckle assemblies are placed in remote locations within an airplane requiring a skilled mechanic, sometimes using only one hand, to unwrap the lock wire on the turnbuckle assembly, adjust the cable tension by rotating the turnbuckle barrel, and then rewrap-ping a lock wire about the assembly. The average time required to adjust a turnbuckle assembly by this technique is from 10 to 30 minutes. At least one airplane crash has been attributed to the breaking of the locking wire and the subsequent disconnecting of the turnbuckle assembly.

7. The aircraft industry has been actively seeking a turnbuckle assembly that was more reliable and less expensive to maintain than the conventional turnbuckle assembly wrapped with locking wire. The requirements were that the assembly must (1) have a positive locking feature that would prevent the relative rotation of the threaded members, (2) have a locking means that would remain effective during the movement of the cable and assembly, particularly when the assembly moved through small holes in the airplane bulkheads, (3) have greater tensile strength than the cable, (4) be corrosive-resistant and not adversely affected by severe temperature conditions, (5) have parts that were interchangeable with the conventional turnbuckle assembly parts, (6) be easy to install and maintain, and (7) be relatively inexpensive to manufacture. In 1944 the aircraft industry evaluated 21 turnbuckle constructions and found that none was sufficiently better than the conventional wrapped turnbuckle assembly to warrant approval. Crien L. Martin Company and Lockheed Corporation received patents Nos. 2,412,566 and 2,398,160, respectively, for new turnbuckle locking devices. However, neither was accepted by the industry or commercially used. In 1946 North American Aviation submitted a new turnbuckle assembly to the National Aircraft Standards Committee, which was rejected. Sometime later Voi-Shan Manufacturing Company proposed that its “Carbuckle” device be used. However, said device was not accepted.

8. In 1944 Stukenborg, while working in a machine shop that made conventional turnbuckle assembly parts, and with the help of Utterback, developed several turnbuckle assemblies that had a locking feature that eliminated the need of the wrapped locking wire. In July 1945 a joint application for patent was filed that became the '482 patent here in suit.

9. The '482 patent specification discloses several embodiments of the invention. Fig. 1, reproduced herein, shows a turnbuckle assembly having a threaded terminal rod 19 with a longitudinal groove 23 milled therein at a depth greater than the depth of the threads, and a barrel 11 with a radial notch 27 formed in the end. When the rod groove 23 and barrel notch 27 are alined, leg 37 of a locking member or formed wire clip 31 is positioned in the base of the groove 23 and moved longitudinally to engage the clip section 35 in the notch 27, thereby preventing relative movement between the rod and the barrel. Clip leg 33 is then positioned in the barrel aperture 17 to restrict the longitudinal movement of the clip.

10. Fig. 6A, also reproduced herein, shows a different embodiment with an additional locking feature in which a longitudinal groove 139 is milled across the threads in the barrel 11, and the depth of the groove 23 formed in the terminal rod 119 is limited to the depth of the threads 119A. When the barrel groove 139 and the rod groove 23 are alined, a longitudinal aperture is formed therebetween to receive leg 37 of the locking clip 31. In this configuration, the primary looking means is the leg 37, whereas in the embodiment shown in Fig. 1 the primary locking means is the clip notch engaging portion 35. In describing this relationship, the specification states:

After tightening, each rod end is adjusted individually with reference to the turnbuckle until its groove, as the groove 25, Fig. 1, is alined with one of the two end grooves 29 in that end of the turnbuckle, or as in Fig.

6A, the groove of the rod and a groove of the related end of the tumbuckle sleeve are alined. The holding leg 37 of the locking member is engaged in the groove of the rod, Fig. 1, or the alined grooves of the rod and turnbuckle sleeve, Fig. 6A, and the locking member moved into place until the notch engaging locking portion 35 seats in the turnbuckle groove 29, the stem 31 of the locking member at such time lying alongside the tumbuckle. After this seating the anchor lug end 33 is sprung outward and moved over into alinement with the hole 17 and allowed to spring back thereinto to complete the engagement. The opposite rod end is similarly locked, completing the installation.

11. In 1952 Stukenborg and Utterback granted Associated an exclusive license under the '482 patent. Associated attempted without success to sell the “Stuke 100” series turnbuckle assembly which is similar to that shown in Fig. 1 of the '482 patent. In 1953 Associated met with limited success in selling the “Stuke 200” series turnbuckle assembly to Delta-Chicago & Southern Air Lines to replace the conventional lock wire turnbuckle assembly. The “Stuke 200” series turnbuckle assembly is similar to that shown in Fig. 6A of the '482 patent except that the locking clip did not extend into the central barrel aperture 17. Although many of the engineers in the aircraft industry were enthusiastic about the “Stuke 200” series turnbuckle assembly, its safety and reliability were questioned because it was felt that the locking clip could possibly vibrate from the longitudinal aperture formed by the alined barrel and rod grooves and that the clip could be pulled from the assembly by a radial pull of less than 15 pounds. Associated proceeded in 1953 to contract with the Pittsburgh Testing Laboratories, an independent testing laboratory, to conduct tensile, torsion, and vibration tests on the “Stuke 200” series assembly having a “300 clip” locking member. The favorable tests results were sent to aircraft manufacturers. The Standards and Methods Department of the Glen L. Martin Company conducted an economic analysis to compare what was by then generally called the “Stukelock” turnbuckle assembly with the conventional assembly and found that the average time in adjusting a conventional wrapped turnbuckle assembly was 15 minutes as compared with less than a minute for the “Stukelock” assembly. It was estimated that this time saving would transpose into a saving of $1.50 per assembly in the initial installation and an additional saving of $2.25 every time the assembly was adjusted thereafter. It was also found that the “Stukelock” assembly was more reliable because it could withstand a substantially greater torsional force.

12. Stukenborg modified the “200” series turnbuckle assembly and the “300” clip. In June 1956 he filed an applica^ tion for patent which resulted in the '408 patent. Patent claims 1-4, not here in suit, are directed to the improved clip,

and patent claims 5-7 are directed to the entire assembly. Figs. 4 and 5 of the '408 patent drawings are reproduced herein and show a turnbuckle assembly in which the clip or lock member 33 has an anchor portion indicated by the reference characters 41, 44, 45, 47, and 49 shaped so that when the anchor portion is positioned in the barrel aperture 27 the end 49 serves as a latch which prevents the clip from being accidentally detached from the turnbuckle assembly by vibration or the like.

13. After completing its report, Martin Company recommended to the National Aircraft Standards Committee of the Aerospace Industries of America that the “Stukelock” turnbuckle assembly be approved for use in the aircraft industry. In October 1956 the Committee gave its approval and assigned NAS standardization numbers to the component elements. In May 1957 the Aeronautical Standards Groups of the Departments of Navy and Air Force approved the “Stukelock” turnbuckle assembly for use in military aircraft. In 1961 the Defense Department required that “Stuke-lock” turnbuckle assemblies be installed in all new aircraft and assigned the following Military Specification numbers to the assembly components:

Each of the above Military Standards pertaining to the component parts contains a notice that the parts are “licensed” under the patents in suit and that the Government does not have a royalty-free license to use the parts.

14. Martin installed “Stukelock” assemblies into the B57D, P5M2, P6M2, and TM61 aircraft that it manufactured for the Department of Defense. Boeing Airplane Company started in 1961 installing “Stukelock” assemblies into B-52 and 727 airplanes that it manufactured and by 1963 used “Stukelock” turnbuckle assemblies in all the aircraft that it manufactured. Some of the other aircraft manufacturers that have used “Stukelock” turnbuckle assemblies include Douglas Aircraft Co., North American Aviation, Cessna, Beech, Sikorsky, Republic, Grumman, and General Dynamics.

15. The April 1964 edition of the Air Force publication “Aerospace Maintenance Safety” at page 9, devoted to describing the “Stukelock” turnbuckle assembly, states:

Extensive and exhaustive tests by all of the Armed Forces have resulted in adoption of the dip locking turnbuckle, pictured on this page. This unproved method of safetying, using the new type of turnbuckle, is explained and illustrated in MS 33736, which replaces the old AN 10482.
The advantages of the MS type turnbuckle over the obsolete AN type include less weight and greater strength, faster adjustment and more positive safetying, a simpler installation, and greater ease of inspection.
The MS turnbuckle assembly with locking clip is approximately ten per cent lighter than the corresponding AN assembly with locking wire, since the entire weight of the locking wire is saved.
The clip used to lock the assembly is so strong that the terminal shanks will twist off before the safety feature loses its integrity. In contrast, locking wire will break under a small torsional load.
The MS assembly can be adjusted and safetied in a matter of seconds. Installation of the locking wire usually takes from ten to thirty minutes. This time differential is even more pronounced in installations where turnbuckle assemblies are fairly inaccessible.
The locking clips prevent rotation of the body with relation to the terminals. Locking wire, even under the best conditions, will permit 180-degree rotation.
A skilled mechanic is needed to install the locking wire. MS locking clips can be installed by unskilled laborers.
The integrity of the locking clip can be checked at a glance. Locking wire must be closely checked, and manipulated if the inspection is to mean anything.
One aircraft manufacturer has reported a considerable cost savings effected by use of this turnbuckle. Since all military aircraft are being fitted with the MS type, maintenance personnel at all bases should become familiar with the latest development in turnbuckles.

PATENT VALIDITY ISSUE

16. Plaintiffs assert that defendant lias infringed claims 1-6, 8, 9, and 14 — 16 of the '482 patent and claims 5, 6, and 7 of the '408 patent. Defendant contends that said claims are invalid on the ground that the inventions recited therein are unpatentable in view of the art that existed at the time the inventions were made. In support of its contention the defendant has directed attention to the following prior patents.

U.S. Patents

Vaughn_ 859, 789 Issued 1907.

Tinnerman- 2,353, 795 Issued 1944.

Foreign Patents

German- 747,256 Issued 1944.

Australian- 4,753 Issued 1931.

17. For purposes of this case, the '482 patent claims in issue may be separated into two groups — those directed towards the locking feature in which the locking leg 37 fits in a longitudinal aperture followed by the alined longitudinal grooves cut in the threads of the rod and sleeve (barrel), as shown in Fig. 6A, and those directed to the locking feature in which the locking leg 37 fits in the base of a rod groove cut at a depth greater than the thread depth and the locking portion 35 engages the sleeve end groove 27, as shown in Fig. 1. In the first category the locking leg 37 forms the primary locking means, and in the second category the locking portion 35 forms the primary locking means. Claims 3 and 5 are in the first category. Claim 3 is representative and reads as follows:

Olaim 8 of patent ®,580,1¡£%
A turnbuckle assembly, including an internally threaded sleeve, rods having threaded end portions joined thereby, and locking members; said rods each having a longitudinal groove in its threaded portion, and said sleeve having a hole at its longitudinal center, and longitudinal grooves in said internal threads, each respectively cooperating with a said rod groove to receive a said locking member, each said locking member comprising a resilient wire having a stem portion, of length to span from said sleeve hole to an end of said sleeve, said stem having one end bent to form an anchor Ing for engagement with said sleeve hole and its opposite end portion bent to embrace an end of said sleeve and continue reversely in locking engagement in said rod and sleeve grooves.

Although claim 5 speaks broadly of a sleeve having “complementary grooves,” the language is implicitly limited to mean “complementary longitudinal grooves” to coincide with subsequent limitations which state that the locking means is “longitudinally engageable with said rod and sleeve groove to prevent said turning movements.” [Emphasis added.] Claims 1,2,4,6, 8,9,14,15, and 16 are of the second category. Claim 1 is representative and reads as follows:

Claim 1 of patent 2,580,J¡32
A turnbuckle assembly, comprising an internally threaded sleeve, rods having threaded end portions joined thereby, and locking members; said rods each having a longitudinal member-housing groove in its threaded portion, and said sleeve being apertured intermediate its length, and having end portions having grooves complementary to said rod grooves, each said locking member comprising a resilient wire having a stem portion, of length to span from said sleeve aperture to an end of said sleeve, said wire having at one end an anchor lug for engagement with said sleeve aperture and an opposite end portion bent to interengage a groove of said sleeve and the complementary groove of a rod end.

Claims 1,2, and 4 define the sleeve as having an “end groove” formed therein. The rod is defined as having a “longitudinal member-housing groove in its threaded portion.” [Emphasis added.] The specification defines the rod groove 23 shown in Fig. 1 as having a depth and width sufficient to house the looking portion 37 of the locking member below the threaded bottoms of the rod. In construing claims 1,2, and 4 in light of the specification it is found that they read on the embodiment shown in Fig. 1, but do not read on the embodiment shown in Fig. 6A. Claim 6 defines the sleeve as having “complementary grooves” registerable with the longitudinal grooves of the rods. First impression might lead one to believe that the phrase “complementary grooves” was generic to both the longitudinal and radial or end sleeve grooves. However, in defining the locking means claim 6 states that the right angle portion 35 engages “said grooves.” In order for the right angle portion 35 to engage a sleeve groove, the sleeve groove must be the radial or end groove 27. Therefore, in reading claim 6 as a whole, the phrase “complementary grooves” is interpreted to mean “complementary end groove.” Claims 6, 8, 9,14,15, and 16 define the rod or rods as having longitudinal groove or grooves formed therein. First impression might lead one to believe that the phrase “longitudinal groove” was generic to the rod groove shown in Fig. 1 in which the depth of the groove 23 is below the thread depth and to the rod groove shown in Fig. 6A which is grooved to the depth of the threads only. Claims 6, 8, 9,14,15, and 16 do not include the sleeve longitudinal groove 139 which forms a longitudinal aperture when alined with the rod groove to accommodate leg 37 of the locking means. In order to define an operable device, the claim language “longitudinal groove” or “longitudinal grooves” must be interpreted to mean a longitudinal groove having a depth sufficient to house locking leg 37 beneath the depth of the threads. It is found that claims 6, 8, 9, 14, 15, and 16 read on the embodiment shown in Fig. 1, but do not read on the embodiment shown in Fig. 6A of the '482 patent.

18. Defendant’s expert witness placed particular emphasis on the German patent as anticipating the asserted claims of the '482 patent in suit. The German patent discloses, in Fig. 1 reproduced herein, a tumbuckle assembly having (1)-a barrel or sleeve with a longitudinal groove cut in the internal threads and a radial aperture formed in the longitudinal center, (2) a terminal rod with longitudinal grooves formed in the external threads at a depth commensurate with the thread depth, and (3) a relatively U-shaped fastener device or locking means h with leg e positioned in a longitudinal aperture formed by the alinement of the longitudinal grooves of the barrel and the rod. It is clear that claims 3 and 5 of the '482 patent in suit read on the turnbuckle assembly shown in Fig. 1 of the German patent, rendering said claims invalid. The German patent does not disclose or suggest that the rod groove be of a depth sufficient to house leg e below the threads or that ail end or radial groove be cut in the barrel end so that the spring turn a will become the primary locking means. It is found that claims 1,2,4,6, 8, 9, 14, 15, and 16 do not read on the tumbuckle assemblies disclosed in the German patent and are not anticipated thereby.

19. As secondary references, the defendant refers to the Australian patent and the Vaughn patent, identified in finding 16, both of which are directed to devices that are generically termed “lock-nuts.” Although tumbuckle assemblies and bolts are within the family of cylindrical threaded members, the tumbuckle assemblies are designed for connecting two members by tension whereas bolts are designed for compressing two members together between the bolt head and the nut. Both references disclose a locking means for preventing the threaded nut from unscrewing from the threaded bolt, in which longitudinal grooves are cut in the threads of the bolt and nut and a keeper or key is inserted to the longitudinal aperture formed by the alinement of the bolt and nut grooves. Neither of these references suggests that the longitudinal groove in the nut be deleted and the depth of the bolt groove be increased so that the keeper or key leg is housed beneath the bolt threads. It is found that claims 1, 2, 4, 6, 8, 9,14,15, and 16 of the '482 patent in suit are not anticipated by the “lock-nut” disclosed in the Vaughn patent and the Australian patent.

20. For purposes of this case, claim 5 is considered to be representative of the '408 patent claims in issue and reads as follows:

Olaim 5 of patent 2,843^j08
In a turnbuclde assembly which, includes a hollow, internally threaded barrel, threaded rod ends thread-edly engaged with said barrel, said rod ends being respectively longitudinally grooved and said barrel having complementary grooves registered with said rod end grooves, said barrel being transversely apertured substantially at its longitudinal center, resilient wire-like lock clip means for locking said assembly against relative rotation comprising an elongated locking portion lying in and extending inwardly throughout the majority of the length of complementarity registered barrel and rod end grooves, a stem integrally connected at its outer end with the outer end of said locking portion lying along the exterior of said barrel and biased toward the surface of said barrel by the resiliency of said clip means, an anchor portion connected to the inner end of said stem, said anchor portion being substantially U-shaped with at least one leg of the U of said anchor portion intersecting said stem inner end at an acute angle, said anchor portion being inserted through a barrel aperture into the interior of said barrel and being disposed by said acute angularity to extend away from said last mentioned aperture toward the inner end of said locking portion and the outer end of said barrel, the other leg of said U having a flared distal end extending across said last mentioned aperture within said barrel and engaging said barrel remote from said locking portion inner end when said anchor portion is inserted to prevent removal of said clip from said assembly.

21. Defendant contends in essence that it would have been obvious to one skilled in the turnbuckle assembly art in 1956 to form the extension o of the fastening device shown in Fig. 1 of the German patent in the same manner as the U-shaped anchor portion designated by numerals 44, 45, 47, and 49 shown in Fig. 5 of the '408 patent. To support its contention, defendant makes reference to the Tinnerman patent which discloses a locking fastener for locking one member such as a radio condenser container to a supporting member or panel by means of a fastener. The Tinnerman fastener is constructed from a flat metal strip and is bent to define a bolding portion comprising a leg and a yieldable tongue. Tbe purpose of the anchor portion of the clip disclosed and claimed in the '408 patent is to prevent the clip itself from being pulled out of locking engagement in the barrel and rod longitudinal grooves, whereas the purpose of the fastening device of the prior Tinnerman patent is to fasten a component to a supporting member. To make the modification suggested by defendant would require that the shape and construction of the fastening device of the Tinnerman patent be substantially modified to correspond to that shown and claimed in the '408 patent, and then taking the modified fastening device from the fastener art and applying it to the turnbuckle art. Furthermore, there is no suggestion in the German patent that the extension c shown therein be modified. The German patent shows, in other embodiments, methods of wrapping the clip around the rod to secure the clip to the turnbuckle assembly. Both the German and '795 patents issued hi 1944, which is 12 years prior to the time that Stukenborg, after making many modifications, developed the commercially successful invention recited in the '408 patent claims. It is found that it would not have been obvious to a person skilled in the turnbuckle art in 1956 to combine the disclosures of the German patent and the Tinnerman patent to construct a turnbuckle assembly such as defined in claims 5, 6, and 7 of the '408 patent.

22. Summarizing findings 16 through 21, it is found that claims 3 and 5 of the '482 patent are invalid and that claims 1, 2,4, 6, 8, 9,14,15, and 16 of the '482 patent and claims 5, 6, and 7 of the '408 patent are valid in view of the prior art asserted by the defendant.

INFRINGEMENT ISSUE

23. Plaintiffs alleged that the defendant infringes the patent claims placed in issue by: (1) using NAS turnbuckle assemblies that were purchased by the airplane manufacturers from unlicensed sources and furnished to the defendant as part of the original airplane equipment, (2) using NAS turnbuckle assemblies that originally came from licensed sources and which have subsequently had component parts replaced with, parts purchased by the defendant from unlicensed suppliers; and (3) using NAS turnbuckle assemblies that have been assembled entirely from turnbuckle components purchased by the defendant in which all the components except the clips (NAS 651) were purchased by the defendant from unlicensed suppliers.

24. In applying the claims in the same manner as was done in determining their validity, it is concluded that claims 5, 6, and 7 of the '408 patent read on the NAS 1074 or MS 33736 turnbuckle assemblies used by the defendant, but that claims 1,2,4,6,8,9, and 14-16 of the '482 patent do not.

25. The plaintiffs have failed to show that any of the NAS 1074 or MS 33736 turnbuckle assemblies furnished to the defendant by the airplane manufacturers as original equipment were purchased from unlicensed sources.

26. After the Aeronautical Standards Groups of the Departments of Navy and Air Force in 1957 approved the NAS 1074 turnbuckle assembly for use in military aircraft, the procurement agency of the Department of the Air Force issued instructions that the NAS turnbuckle components be purchased to replace the wire-wrapped turnbuckles (AN 10482) on an “as required” basis.

27. Prior to the filing of the petition in this case defendant procured from unlicensed sources the following components:

NAS 645 (Clevis Rod Ends)_ 805
NAS 648 (Eye Ends)_ 260
NAS 649 (Turnbuckle Bodies)_ 2,755
NAS 650 ('Stud Terminals)_ 40,990

Between 1960 and 1964 the defendant purchased approximately 109,675 NAS 651 clips from licensed sources. There is no evidence that the defendant purchased the complete NAS 1074 turnbuckle assembly from unlicensed sources. However, 2,755 complete assemblies (NAS 1074) could be assembled from the purchased components.

28.The approximate selling price ranges of the components referred to in finding 27 are as follows:

NAS 645 (Clevis Rod Ends)_$. 60-$7.00
NAS 648 (Eye Ends)_ .45- 6.00
NAS 649 (Turnbuckle Bodies)_ . 45- 6.00
NAS 650 (Stud Terminals)_ .45- 4.50
NAS 651 (Clips)_ .02- .08

29. Findings 27 and 28 are not intended to be conclusive for accounting purposes, but are relevant to the issue of infringement.

30. The defendant purchased the NAS components mentioned in finding 27 for two purposes: (1) To assemble the components to make complete turnbuckle assemblies (NAS 1074) for replacing the original turnbuckles (NAS 1074) furnished by the airplane manufacturers and the conventional wire-wrapped turnbuckle assemblies (AN 10482) on an “as required” basis, and (2) to replace components of the turnbuckle assemblies as need be.

31. Plaintiffs contend that when the defendant replaces a barrel or terminal of a turnbuckle assembly with another barrel or terminal the resulting assembly is in effect a “reconstructed” assembly and not just repaired. Applying the “repair or reconstruction” doctrine set forth by the Supreme Court in Aro Mfg. Co., Inc. v. Convertible Top Replacement Co., Inc., 365 U.S. 336, 128 USPQ 354 (1961), it is found that when a turnbuckle barrel or terminal is replaced the resulting assembly is not reconstructed within the meaning of the patent law. It is therefore found that the NAS 1074 turnbuckle assemblies that have unpatented components replaced with the parts mentioned in finding 27 do not infringe the combination claims 5,6, and 7 of the '408 patent.

32. The defendant has stipulated that it used some of each of the components mentioned in finding 27, but the evidence is not clear whether the components were used to construct a complete assembly or whether they were used for repair purposes. Each time a NAS turnbuckle assembly is adjusted the clips are removed and discarded and new clips are installed after adjustment. It is also customary that when a cable becomes frayed or damaged the swaged terminal (NAS 650) affixed to the cable is disconnected from the turnbuckle assembly, and the damaged terminal and the cable are replaced by a new terminal and cable length. It is rare that a barrel by itself becomes damaged and needs to be replaced. The fact that the defendant has used turnbuckle barrel components in cooperation with clips (NAS 651) warrants finding that at least one complete turnbuckle assembly (NAS 1074) was constructed from the components mentioned in finding 27. Also, considering that defendant intended to use some of the purchased components in an assembled manner, it is concluded that the plaintiffs have made a sufficient showing that the defendant has used at least one turnbuckle assembly (NAS 1074) constructed from said purchased unlicensed components.

33. Defendant contends that it has an implied license to use NAS 1074 turnbuckle assemblies constructed entirely from the components mentioned in finding 27 by the fact that the clips (NAS 650) were purchased from licensed sources and the only use of the clips is in a NAS 1074 turnbuckle assembly. It is found that no implied license arose to use the clips purchased from licensed sources in combination with the other components purchased from unlicensed sources.

34. Summarizing findings 23 through 33, it is found that the NAS 1074 turnbuckle assemblies constructed from the unlicensed component parts referred to in finding 27 infringe claims 5, 6, and 7 of the '408 patent.

Conclusion of Law

Upon the foregoing findings of fact, which are made a part of the judgment herein, the court concludes as a matter of law that claims 3 and 5 of patent 2,580,482 are invalid, that claims 1, 2, 4, 6, 8, 9, 14, 15, and 16 of patent 2,580,482 are valid but have not been infringed by the defendant, and that claims 5, 6, and 7 of patent 2,843,408 are valid and have been used by defendant without license from the patent owner, and that plaintiffs are entitled to recover for such use, and judgment is entered to that effect. The amount of recovery will be determined pursuant to Buie 47(c) (2). 
      
       The opinion, findings of fact, and recommended conclusion of law are submitted under the order of reference and Rule 57(a).
     