
    364 F. 2d 385
    MINE SAFETY APPLIANCES COMPANY AND UNITED TANKS, INC. v. THE UNITED STATES
    [No. 307-60.
    Decided July 15, 1966]
    
      
      Julian Miller, attorney of record, for plaintiffs. Jo. Baily Brown and Brown, Oritolüow, Flick <& Peckham, of counsel.
    
      G. M. Paddock, with whom was Assistant Attorney General John W. Douglas, for defendant. Michael T. Platt, of counsel.
    
      Before CoweN, Chief Judge, Laramoee, Dureee, Davis and ColliNS, Judges.
    
   Davis, Judge,

delivered tlie opinion of tlie court:

This is a claim for reasonable and entire compensation under 28 U.S.C. § 1498 for the unauthorized use and manufacture by or for the United States of the alleged invention disclosed and claimed in U.S. Letters Patent 2,625,683, entitled “Crash Helmet,” which issued January 20,1953, on an application filed December 8,1947. Plaintiff, United Tanks, Inc., is a California corporation and is the owner (by assignment) of right, title, and interest in and to this patent, subject to an exclusive license for a limited use granted to plaintiff Mine Safety Appliances Company, a Pennsylvania corporation. Previously, the defendant moved to dismiss the suit as to plaintiff Mine Safety Appliances Company on the ground that Mine Safety owned no interest in the patent and therefore this court did not have jurisdiction under Section 1498. The motion was argued before the court which denied it on March 23, 1962, following the position taken in Pratt and Whitney Co., Inc. v. United States, 139 Ct. Cl. 540, 153 F. Supp. 409 (1957).

The subject matter of the patent (the '683 patent) concerns a crash helmet having a crushable, substantially inelastic, energy-absorbing liner disposed between a rigid outer shell and a resilient inner liner adapted to accommodate the helmet comfortably to the wearer’s head. The suit is based on the alleged infringement of claims 1 and 14-18 by crash helmets procured by the defendant during the 6-year period preceding the filing of the petition. The parties have agreed to a separation of the issues for trial. The questions of validity, infringement, and license are now before the court.

The use of helmets and body protective devices utilizing rigid outer armor plate in combination with various padding and shock-absorbing materials dates back to man’s earliest conflicts and sporting contests. These helmet and other protective devices have become more sophisticated through the years with the advent of better materials and the need for greater protection in modern warfare. Historically, numerous materials have been used to provide padding and shock absorption, including solid and granular cork compositions, papier mache, felt, asbestos, animal and mineral fibers, and the more modern polystyrene foam plastics, such as cellular cellulose-acetate.

For this case it is helpful to distinguish between the properties of shock absorption and energy absorption in the context of helmet construction. Shock absorption absorbs the energy of a sudden impulse force and transmits the absorbed energy over a greater area so that the resulting unit force transmitted to a given area is less than the total applied force. Shock-absorbing materials provide a time lag between the impulse force and the transmitted force but substantially all of the energy absorbed is released as the material regains its initial configuration due to elasticity. Energy absorption is characterized by the dissipation of the energy of a sudden impulse force through a permanent deformation of an energy-absorbing material, thus substantially reducing the force transmitted through the shock-absorbing material. Energy-absorbing materials also act as shock absorbers but some shock-absorbing materials have poor energy- absorption properties. Hard rubber is an example of a material having good shock-absorption but poor energy-absorption properties. Hard rubber would absorb the energy of an impulse force and transmit the energy through the rubber over a larger area resulting in a transmitted unit force that is somewhat less than the impulse force. A short time delay between the impulse force and transmitted force would be effected by the compression and rebound of the elastic rubber but energy loss as the impulse force is transmitted through the rubber is negligible. Cellular cellulose-acetate, on the other hand, exemplifies a material having high energy-absorption properties. As an impulse force sufficient to break down the cellular walls is applied, the impulse energy is dissipated through the cell wall breakdown, resulting in a much smaller transmitted unit force. It is apparent that all of tbe materials named above have good shock absorption but relatively poor energy absorption except the polystyrene foam plastics or cellular cellulose-acetate which exhibits high shock and high energy absorption.

The claims of the '683 patent define a protection device comprising a relatively hard outer shell, a layer of non-resilient, crushable, energy-absorbing material, and a lining of soft resilient material. The claims are set out in detail in findings 9 and 10.

Trial Commissioner Lane found the patent invalid, under 35 U.S.C. § 103, “as failing to define patentable invention over the prior art.” We do not reach that issue, or certain other defenses presented by the Government, because we are satisfied that the United States has been granted a license under the patent.

The co-patentees, Charles F. Lombard and Herman P. Both, were employed by the University of Southern California (U.S.C.) in its aviation medicine program. When Dr. Lombard joined the faculty in January 1946 as Associate Professor of Aviation Medicine, the University held a contract (due to terminate on June 30, 1946) with the Federal Government’s Office of Scientific Besearch and Development (OSBD). This OSBD agreement, as amended, called upon U.S.C. to “conduct studies and experimental investigations in aviation physiology with particular attention to the effects of acceleration, decompression, anoxia, and cold, and methods to combat these effects.” Early in April 1946, the University entered into a related contract with the Navy (Contract No. N6ori-77 and Task Order I thereunder) providing that:

(1) _ The Contractor shall, in accordance with any instructions issued by the Director of the Planning Division, Office of Besearch and Inventions, furnish the necessary personnel and facilities and shall conduct research, using a human centrifuge, on the physiological, biochemical and anatomical effects of acceleration on the body, relative to pilot position in high speed aircraft, and shall investigate and study:
(a) Physiological Effects: The mechanisms operating in the pooling of blood; dynamics of circulation within the skull and the laws governing intracranial pressure; the load on the heart and its capacity to operate under high acceleration; and the vasomotor reflexes.
(b) Biochemical Effects: The changes in the blood in its passage through the brain under conditions of reduced flow incident to acceleration.
(c) Anatomical Effects: The capacity of the tissues to withstand high acceleration without tearing, rupturing, or bruising; and the displacement of organs in the body under high acceleration. [Emphasis in original.]

Lombard was assigned by U.S.C. for full-time work on the project covered by this contract, and was so employed during the making of the alleged invention, as well as while the patent application was pending. Noth, who came to the University on May 29, 1946, as an engineering consultant, was not formally assigned to the Navy work until after the making of the invention.

The Government’s patent rights under the Navy contract were established by Section 17 of that document:

(a) Where used in this Section,, and not elsewhere in this contract, the expression “Subject Invention” means each invention, improvement and discovery (whether or not patentable) conceived or first actually reduced to practice (i) in the performance of this contract, * * * or (ii) in the performance of any research or development work relating to the subject matter hereof which was done upon the understanding that this contract or any subcontract hereunder would be awarded * * *.
(b) Contractor agrees to and does hereby grant to the Government an irrevocable, non-exclusive, non-transferable and royalty-free license to practice, and cause to be practiced for the Government, throughout the world, each Subject Invention in the manuf acture, use and disposition according to law of any article or material, and the use of any method * * *.

Since it is agreed that one having a license under a patent has a complete defense to a charge of infringement when the patent or invention is used in accordance with the license agreement (De Forest Co. v. United States, 273 U.S. 236, 242 (1927)), the ultimate question before us is whether the patent in this case was covered by Section 17 of the contract.

The trial commissioner thought that the crash helmet which forms the basis of patent '683 did not come within the scope of the Navy program, and was therefore not covered by the license provision. His view was that (a) the Navy contract was primarily concerned with physiological studies of the effects of acceleration on the human body, utilizing a government-supplied centrifuge located at U.S.C., and was not intended to include the design and development of a protective crash helmet; (b) the Lombard-Eoth research project for development of a crash helmet was separate from the Navy project (though carried on simultaneously), and was largely financed as to testing and instrumentation by private funds obtained by the University; and (c) the patented helmet was not finally reduced to practice in the centrifuge building originally supplied by the United States under the OSED contract. The defendant insists that these conclusions, fused from both law and fact, are much mistaken.

As we assess the record, there was, at the least, a close connection between the Navy contract and the U.S.C.’s helmet project. In the first place, the prior OSED contract, like the Navy agreement, concerned, in general, the effects of acceleration upon flyers’ bodies, and the University’s final report under that contract (submitted about three months after the consummation of the Navy agreement) said that “it is anticipated that future work in aviation physiology at the University of Southern California would be along the lines already studied by the group [working under the OSED program]. * * * Physiological studies of the effects of abrupt acceleration on the body and the aircraft design changes and personal protective gear necessary to decrease the hazards of crash landings will be wndertaTeen” (emphasis added). The plaintiff says that this does not prove, in itself, that protective-gear work was to be undertaken under the Navy contract, rather than independently, but we think that the University’s statement does require us to scrutinize very carefully the present claim of true and total independence. In other respects U.S.C. explicitly recognized that projects carried on under the umbrella of the OSRD contract were extended under the Navy program; and the Navy clearly considered its contract to be a prolongation of the earlier one. The least that can be said is that in large measure there was undoubtedly continuity.

It is also plain that both the Navy and the University expressly anticipated that one of the results of the Navy-contract work would be the development of better protective gear. U.S.C.’s original contract proposal envisaged as a practical application of the research, “the development of methods to protect humans against the very high accelerations that will be possible in future planes”, and then added:

The development of these methods will be greatly helped by understanding the basic physiological reactions of the body to high accelerations. It would be our aim to work in close cooperation with local designers and test pilots so that any methods we develop would be at the same time practical and possible in practice. Blueprints and/or drawings will be furnished of any model or prototype developed.

The Navy’s memorandum approving the idea of the contract with U.S.C. declared that “the results of the research will be of use in the field of Naval aviation in the development of protective equipment and change of pilot position to protect the pilot from high acceleration forces developed by high speed aircraft.” One of the plaintiffs’ answers to these materials is that the “acceleration” mentioned by both the Navy and U.S.C. was solely “whole body acceleration” and not “impact acceleration of the head” (as in a crash). But “acceleration” is a general term often used to embrace the impact variety — we point out below that both parties later expressly recognized impact research as coming under this contract — and flyers’ helmets are useful not only in crash landings but for possible impacts occurring in the midst of turbulent high-speed flight. In any event, the parties foresaw that improved protective gear, at least of some sorts, could result from the theoretical and practical knowledge gained through the Navy contract. The mere advancement of pure science was not the only goal of the program.

Next, tlie helmet project was largely carried on by Lombard and Noth in close physical proximity to the conceded Navy work in the centrifuge building; most, if not all, of Lombard’s activities, as we have mentioned, were under that contract for the entire period of its existence (1946-1950). We do not overturn the trial commissioner’s finding that the helmet was not finally reduced to practice in the centrifuge building, but it is indisputable that much of the prior work was carried on there cheek by jowl with research admittedly covered by the Navy’s agreement.

There are, too, definite post-invention indications that the Navy considered research related to crash helmet development as .covered by its contract, and that U.S.C. acquiesced in that position. In the middle of 1948, Dr. Lombard transmitted to the Director of the Medical Science Division of the Office of Naval Research a proposal for a separate research project on cerebral injury, with the goal of furthering head protective gear, including crushable, shock-absorbent material. The Director replied that funds for such a separate project were not then available, but that “in the meantime, the research can be continued as in the past, under Task I of Contract N6-ori-77 [the Navy contract] as provided for under paragraph A 1 (c) * * From 1949 to 1951, the University (Lombard, in particular) clearly recognized, in communications and reports, that this research work on head impact (including impact acceleration of the human head using protective headgear), as carried on from 1948, was under the contract. For instance, the final report (in March 1951) on the Navy agreement (covering the period from April 1946 to August 1950) referred to one of its achievements as the opening up of “the study of the tolerance of the human to impact acceleration of the head”; and in this same report there are summaries of studies on “voluntary tolerance of the human to impact accelerations of the head” and “new materials for controlled impact energy absorption” — the latter including specific mention of “preliminary studies * * * of various materials which might find application in the protection of tlie human body (especially the head) against impact forces”, as well as “theoretical analysis and experimental results demonstrating] that low-density materials exhibiting largely non-resilient behavior under impact forces have definite value in design of protective equipment.”

Plaintiffs insist that all this was physiological and theoretical research, not the practical development of gear, and that it came after the invention in suit. .The documents do not entirely square with this position, but even so the irreducible facts are that both parties treated research on important aspects of head impact as covered by the existing Navy contract which began early in April 1946, and that both parties understood that such coverage was not restricted to work requiring use of the Government’s centrifuge.

From these and other items in the record the defendant argues that the development of protective head gear was itself an integral part of the Navy contract — a full component, in its entirety, of the subject to be studied from April 1946 on. Plaintiffs reply, and the trial commissioner agreed, that the contract, properly construed, covered only physiological research into the effects of acceleration on the human body, not the practical development of protective devices to prevent impact injuries; the development of equipment or devices, if any, was to be directed to methods of combating the effects of “whole-body” acceleration forces, through use of the centrifuge, rather than impact forces. It is also pointed out that U.S.C. paid for the testing of the helmet project (as well as the instruments needed for testing) through non-government funds (solicited from the aviation industry), and in its own mind treated the project as independent of the Navy contract.

There is little doubt that the University thought that the helmet undertaking could be kept entirely separate — legally speaking — from the Navy research and development work, but we think that it erred in this belief. There was a close and umbilical connection which was not, and could not be, severed. We need not go so far as to say that the helmet program as a whole was an integral part of the Navy contract — though there is strong support for that position — but we do hold that the license clause of Section 17, supra, covered an invention so intimately tied to the work to be done under, and the results anticipated from, that agreement. As suggested above, we read the scope of the Navy program in accordance with the parties’ contemporaneous construction— and contrary to plaintiffs’ present contention — as including from the beginning head-impact research within the contractual concept of “acceleration”. We also draw from the contract, its background, and history, that both parties expected that practical developments in protective devices could well result from the knowledge to be acquired under the contract. It is in this double light that we apply Section 17.

That provision, in granting the United States a royalty-free non-exclusive license to practice “each invention, improvement and discovery * * * conceived or first actually reduced to practice (i) in the performance of this contract”, does not mean that, before a license can ensue, each and every component of the invention must be found to have occurred or been discovered as an integral part of the contract performance. Nor does the grant mean that the contractor must have been engaged to make the whole of the particular discovery or to study all aspects of the problem. At least in those instances in which the invention was conceived or practiced during the existence of the contract, it is enough that an important factor in the invention was itself within the contractual scope, or resulted directly from the course of contract performance. That is the import, as we understand it, of the general phrase “in the performance of this contract.” It is immaterial, therefore, whether or not the practical development of impact head gear was, in and of itself, within the Navy agreement. That was only one aspect, though an important one, of the invention. The physiological, biochemical, and anatomical research on impact-acceleration and the study of energy-absorbing materials — which had to precede or accompany the practical head-gear applications'— were also necessary and important components; and such research was an integral part of the contract. Without these contract-covered inquiries, the final invention would not have been made.

Lombard and Roth may have thought that, by fiat, they could carve out this type of research from the Navy work and preempt it wholly for private non-federal benefit — but they could not do so. The original contract of April 1946 included it, and there was neither a formal excision nor an authorized agreement of the contracting officer excluding it. The impact-acceleration research carried on by the inventors and their associates necessarily came under the Navy program. The Government desired and paid for a royalty-free nonexclusive license resulting from that type of research (among others), and neither IT.S.C. nor the inventors could avoid that federal right by unilateral action. Such a license is wholly appropriate because Lombard and Roth, in conceiving and first practicing the invention, undoubtedly benefited from this research. We also infer, secondarily, that they probably gained from their knowledge of and proximity to the kind of acceleration research — whole body acceleration experienced in flight — which plaintiffs admit to be under the contract.

It is fitting to read the license-grant of Section 17 liberally, as we do, and not to confine it severely within a narrow compass. “Inventions made under a Government contract are the product of expenditures from the public treasury in the course of a governmental function; the public, having in a sense ordered and paid for the invention through its representatives, should not again be taxed for its use, nor excluded from its use, nor permitted to use it upon restrictive conditions advantageous to no one but the patent owner.” This general policy is reflected, for federal employees, in 28 U.S.C. § 1498(a), barring all claims for patent compensation by “any patentee or any assignee of such patentee with respect to any invention discovered or invented by a person while in the employment or service of the United States, where the invention was related to the official functions of the employee, in cases in which such functions included research and development, or in the making of which Government time, materials or facilities were used.” This immunity provision has been held to cover instances in which only one of several inventors was a federal employee. Strategical Demolition Torpedo Co. v. United States, 119 Ct. Cl. 291, 96 F. Supp. 315 (1951), cert. denied, 342 U.S. 825. Even in the absence of a patent-license clause in the contract, the same general policy has been applied by this court to give the United States an implied license, as against the contractor-patentee, to use inventions resulting from a federal experimental and development contract. Ordnance Eng'r Corp. v. United States, 68 Ct. Cl. 301, 352-53 (1929). The same liberality should infuse an express contractual provision like Section 17. In the discussions of the last two-and-a-half decades over the patent policy which the Federal Government should pursue in its contracts, there does not seem to have been much question that the United States is at least entitled to a royalty-free non-exclusive license for practice of inventions made under or in the course of a federal contract.

For these reasons, we hold that the United States has a royalty-free license to practice the invention and may not be held liable for compensation for such use by the Government or on its behalf. The plaintiffs are not entitled to recover and the petition is dismissed.

Collins, Judge,

concurring only in the result:

I agree that plaintiffs are not entitled to recover, but I cannot agree with those portions of the opinion of the court which conclude that the United States has been granted a license under the patent in suit and that it is unnecessary for the court to reach the issue of patent validity.

The license issue is difficult to resolve in favor of defendant. The Navy contract (No. N6ori-77) and Task Order I, quoted in the court’s opinion, call for research “using a human centrifuge” on the physiological, biochemical, and anatomical effects of acceleration on the body in high-speed aircraft. These effects to be studied are specifically directed to blood circulation incident to high acceleration. Such research was not intended to relate to the development of skull protection against crash impacts and sudden decelerations. It was found that the research centrifuge was not used for testing crash helmets. It was also found that private fvmds from the Aircraft Industries Association were used to start the project of developing a crash helmet in the spring of 1946. The Lombard and Noth application for a patent was filed in 1947. In 1948, the Director of the Office of Naval ’Research wrote that funds for the development of head protective gear were not available. The “recognition” from 1949 to 1951 that research work on head impact “as carried on from 1948” was under a contract does not warrant a conclusion that the inventors’ work on crash helmets in 1946 and 1947 was, therefore, under the Navy research contract. There is no evidence that defendant obtained an actual license under the patent in suit, and a conclusion that there was an implied license is believed to be hindsight.

It is also my conclusion that the court should resolve rather than bypass the patent validity issue raised by the pleadings and supported by findings. Trial on the merits related to a considerable extent to the presentation of evidence that the Lombard and Both patent in suit is invalid over prior art. The findings accompanying the court’s opinion include many relating to the several patent claims in suit and to the prior United States and foreign patents and publications. It is believed that it is in the public interest and also in the interest of the party asserting invalidity, at considerable trial expense, to have a ruling upon this issue. Since the findings reported to this court state that the patent claims relied on in the patent in suit are invalid over the prior art, I would dismiss plaintiffs’ petition upon this ground rather than upon a questionable license theory.

FINDINGS OF FACT

The court, having considered the evidence, the report of Trial Commissioner Donald E. Lane, and the briefs and arguments of counsel, makes findings of fact as follows:

1. This is a patent suit arising under the provisions of 28 U.S.C. § 1498 for reasonable and entire compensation for unauthorized use by the United States of subject matter disclosed and claimed in U.S. Letters Patent 2,625,683, entitled “Crash Helmet” issued January 20,1953, to Herman P. Both and Charles F. Lombard on an application filed December 8, 1947. This patent will be referred to hereinafter as the patent in suit or the ’683 patent.

2. Prior to issuance of the patent in suit, the applicants assigned all of their rights to and under their invention, and in, to, and under any United States patent that might issue thereon, to Protection, Inc., a corporation of California. The patent in suit issued to that corporation as assignee. Plaintiff, United Tanks, Inc., is a corporation of the State of California and became the owner of the entire right, title and interest in and to the patent in suit by a duly recorded assignment on December 19, 1956, and was the owner thereof on August 9, 1960, the date the petition was filed. Plaintiff, Mine Safety Appliances Company, is a corporation of the Commonwealth of Pennsylvania and became an exclusive licensee for a limited use of the subject matter disclosed and claimed in the patent in suit by a license agreement between United Tanks, Inc., and Mine Safety Appliances Company, dated December 19, 1956.

3. On September 14,1961, the defendant moved to dismiss the suit as to Mine Safety Appliances Company (MSA), alleging that MSA was only one of a number of licensees under the patent in suit and owned no interest therein and therefore the court did not have jurisdiction of MSA under 28 U.S.C. § 1498. The motion was argued before the court which denied the motion on March 23, 1962.

4. Counsel for the parties agreed at pretrial to a separation of issues for trial, and that the questions of validity, infringement, and license under the patent in suit be first determined upon full proofs, findings of fact, and arguments of counsel, and that the accounting issue, if any, be deferred until resolution of the liability issue.

5. The patent in suit relates generally to a crash helmet or other protective device for the human body. More specifically, the patent is directed to the use of a non-resilient crushable energy-absorbing liner provided interiorly of a rigid outer shell with a second inner layer of resilient material being provided interiorly of the crushable liner to accommodate the device more comfortably to the wearer’s body.

6. The patentees have set forth in this specification the general construction of a helmet, the function of the crush-able liner, and how the invention distinguishes over the prior art in the following language:

The helmet of the present invention comprises a rigid outer shell, a layer just within the outer shell, of energy-absorbing material; and preferably includes a second, or inner layer of resilient material. The function of the rigid outer shell is to distribute any force applied locally on the outside of the shell so that it will act on as large an area as possible within the helmet. Previously helmets have been constructed employing a relatively rigid or hard outer shell as a means for distributing locally applied force but these helmets have relied either solely on the use of such a hard outer shell or combined such a hard outer shell with an inner lining of resilient material, such as sponge rubber. The helmet of the present invention involves a new concept in the matter of the energy-absorbing liner for the rigid outer shell. When a helmet is constructed with a rigid outer shell with a resilient lining, the resilient lining functions merely to slightly delay the application of the force of the impact to the head of the wearer by temporarily storing and then transmitting the impact energy. The present invention involves the employment of a substantially rigid outer shell and an energy-absorbing layer composed of a non-resilient material which is capable of being crushed under the action of an impact force. This layer of material has characteristics that enable it to be crushed (within limits) without transmitting the force that crushes it. * * *

7. The invention as illustrated in Fig. 5 (reproduced herein) of the patent drawings embodies an outer shell 4

preferably formed of a composite material consisting of a multiplicity of layers of fiber glass cloth, bonded together into a single wall structure. An energy-absorbing or impact-absorbing material 17 is placed interiorly of the outer shell 4. An inner liner or cushioning layer 18 may be secured to the protective wall 17 while a lining 48 of a soft material such as chamois leather may be provided interiorly of cushioning layer 18 to further increase comfort to the wearer. Vent openings 44 are provided in the liner 43 which cooperate with grooves 19 in the energy-absorbing material 17 to allow ventilation of the helmet. A description of the installation of earphones, locking pieces therefor, and edge trim is unnecessary as they form no part of the claimed invention.

8. The patentee has described his energy-absorbing or impact-absorbing material in the following language in the patent specification:

* * * We do not limit ourselves in the practice of this invention to any particular material for this purpose, but it should be a material which has a resistance to crushing which increases relatively little while the material is crushed to one-half or less of its original thickness under an impact or compressive force. A material having this characteristic is highly advantageous when used in this way, since it functions to absorb and dissipate energy delivered to the outer shell 4 during an impact blow, and is far superior to an elastic substance which will function to become compressed, and after compression will impart substantially the full energy of the impact blows at the side or face of the material remote from the side at which the impact occurred. We prefer to employ for this energy-absorbent wall or outer liner, a cellular material such as cellular cellulose-acetate, whose cellular structure will be destroyed whenever the compressive force developed during an impact blow exceeds the inherent crushing strength of the material, and which will consequently absorb and dissipate energy. For this purpose we may employ polystyrene foam, or hard foam rubber. However, cellular cellulose-acetate is preferably employed in pieces, which should be as large as possible, and they should substantially cover the entire interior surface of the outer shell 4 except in the space required for earphones, and except for channels provided for ventilation. * * *

9. Plaintiffs rely on claims 1, 14,15,16,17, and 18 of the patent in suit. Claims 1, 17 and 18 are directed to a crash helmet while claims 14,15 and 16 are directed to the general area of body protection devices. Claims 16 and 17 are representative of the two types of claims and further represent the broadest and narrowest recitation, respectively, of the energy-absorbing material which forms the basis of the subject invention. They are set forth below in clauses to facilitate understanding the combinations recited.

Patent Claim 16

A protection device for protecting a portion of the human body, which comprises
(1) a relatively hard outer shell and
(2) a layer of non-resilient, crushable, energy-absorbent material within the outer shell, and
(3) a lining of soft resilient material within the layer of crushable material.

Patent Claim 17

A crash helmet for protecting a portion of a human head against impact, said crash helmet having
(1) a body including a substantially rigid shell
(2) a layer inside and adjacent said shell including a material capable of disintegrating within the layer, and in disintegrating functioning to resist a force of sufficient magnitude to crush and partially deform the same, thereby limiting the transmitted force to an amount tolerable to the human head,
(a) said material being substantially inelastic so that it is incapable of storing up the said crushing force and transmitting it.

10. Claims 14 and 15 are similar to claim 16 except for their narrower recitation of an energy-absorbing material. Both claims 14 and 15 require the energy-absorbing material to maintain its deformed state after being subjected to an impact force to thereby limit the transmitted force to an amount tolerable to the body. Claim 14 further recites means for containing and enveloping the protecting means set forth in its preamble. Claim 1 is broader than claim 17 in that it does not require the energy-absorbing material to be capable of “disintegrating,” but rather, merely recites an inelastic material capable of deforming and absorbing and dissipating a considerable impact force. Claim 1 further recites an inner resilient lining layer as does claim 18 which is dependent upon claim 17.

11. Crash helmets of the general type disclosed in the patent in suit were first used in 1947 almost exclusively by test pilots of aircraft companies that were building and testing experimental aircraft. It was not long before the helmet was being used by substantially all commercial and military test pilots. Later, the helmet was regularly issued to jet pilots in the Armed Services. Mine Safety Appliances Company was awarded Government contracts for some 51,000 of the patented helmets between 1955 and 1958. From 1958 to the early part of 1960, contracts for at least 58,000 of these same helmets were awarded by the Government to others. The helmet has also been adopted for use as a racing helmet by automobile racing drivers and as a protective helmet by motorcycle police.

12. In January 1946, Dr. Charles F. Lombard, a copatentee of the patent in suit, received an appointment as Associate Professor of Aviation Medicine in the School of Medicine, Department of Physiology, at the University of Southern California (U.S.C.). Lombard had served in the military service from 1941 through 1945 and was stationed at Eglin Field, Florida, an Army-Air Force Proving Ground for various types of equipment, in 1945 where he was in charge of the Physiological Test Section. When Lombard joined the U.S.C. staff, an OSRD (Office of Scientific Research and Development) was in its final phase and was due to terminate on June 30, 1946. Although U.S.C. was negotiating for a new contract from the Navy at this time, there was no assurance that a contract would be awarded. Dr. Lombard and a Dr. Drury solicited members of the Aircraft Industries Association for financial contributions with which U.S.C. could continue its aeromedical research. The solicitation was successful and such a fund was established at U.S.C. At Lombard’s suggestion, U.S.C. used this fund to begin a project on the development of a crash helmet for aircraft pilots in the spring of 1946. Lombard’s initial object was to design a helmet having a rigid outer shell with a general configuration that would incorporate earphones and goggles, and allow for a liner 'between the shell and the pilot’s head. Herman P. Noth, a copatentee of the patent in suit, became associated with the Department of Aviation Medicine at IT.S.C. on May 29,1946, as an engineering consultant. His first duty at U.S.C. was to take over the actual supervision of the helmet project initiated by Lombard. Several helmets were fabricated at the request of and with the assistance of Northrop Aircraft, Inc., for flight tests in June and July of 1946. These helmets did not incorporate the crushable liner disclosed in the patent in suit but rather, used a conventional partially precompressed resilient foam rubber lining.

13. After helmets utilizing conventional linings were produced in 1946 for Northrop Aircraft, Inc., Noth began a study of existing literature concerning hazards to the human head from impact and methods of protecting the head from such hazards. Lombard testified that in the summer of 1946 Noth approached him with the idea of using the principle of energy absorption inside of a helmet in the form of a plastic permanently deformable liner. Lombard suggested the use of a rigid plastic foam material as an energy-absorbing liner. Noth testified as follows concerning the suggestion of the use of cellular cellulose-acetate (CCA) as a lining material:

* * * * *
Q. I believe you stated that the CCA, the cellulose acetate material, was brought to you by somebody. Is that correct?
A. Yes.
Q. By whom was that?
_ A. To the best of my recollection, the person who first directed our attention to that was a man by the name of Brandt Goldsworthy at the Industrial Plastics Company, who had been selected to actually fabricate the shells used for the Northrop helmets. Doctor Lombard and I had discussed the theoretical basis of energy absorption in helmets, and in discussing the shells with Mr. Golds-worthy we mentioned our interest in this area, and that we had been considering this cellular material, which might be a possibility, so that he gave us the names of several materials, including CCA.
Q. Do you remember what else he may have mentioned?
A. I believe he suggested there was a material known as celltite, a hard foam rubber, and also mentioned sty-rofoam.
* * * * *

14. Both was assigned the task of testing the cellular cellulose-acetate material for its compression and resiliency properties and its general acceptance in fulfilling the idea of an energy-absorbing helmet lining. This material was then used in the construction of four experimental crash helmets by North American Aviation.

15. Defendant contends that all of the patent claims in suit are invalid in view of the following 'prior patents and publications.

16.Each of the above patents and publications has an effective date prior to the filing date, December 8, 1947, of the '683 patent in suit, the earliest date to which said patent is entitled. The United States patents to Eeppa, Sturm, and Murray, and the British patent to Modiano were cited by the Patent Office examiner during the prosecution of the application for the '688 patent.

17. The prior patents relied on by defendant can be divided into groups. Each of the patents in the first group, comprised of the Elsdon, Knight, Modiano, Filter, Eeppa, Vanusek, Tress, and Brodie patents, discloses a helmet or protective covering for the head in which a rigid outer shell is provided with an inner liner characterized as having some degree of energy absorption and inelasticity. The patents in the second group, comprised of the Morrison, Jeffries, Kunz, and Jones patents, are directed to the construction of packing materials and packages. The packaging art incorporates the broad category of shock-absorbing materials. The patents in the third group, Murray and Maling, are directed to footwear constructions employing materials which exhibit a degree of energy absorption.

18. The German patent to Filter and Maim, No. 707,963, issued in 1941, discloses a crash helmet having two rigid outer shells attached at the crown area and substantially inelastic energy-absorbing webs disposed between the shells which absorb impact energy by permanent deformation. Fig. 1 of the German patent is reproduced herein. The inelastic energy-absorbing means are formed as striplike webs 10 and 15 which are disposed in the rim portions of the shells. A padding material is provided interiorly of the inner shell to improve comfort to the wearer. The specification of this 1941 German patent stated:

When the helmet comes under a great load, for example through impact against a hard object, a pressing in of the outer wall 4 will occur at the corresponding place of the helmet, whereby, by means of the webs 10 or 15, the local pressure becomes widely distributed over the head, whereupon a deformation of the webs 10 or 15 occurs. The webs are hereby able to convert so much impact energy into deformation work that even very strong impacts can be borne by the helmet-wearer without injury to his head.

This prior patent, not cited by the Patent Office examiner, teaches the basic concept of providing in a helmet an inelastic

energy-absorbing means disposed interiorly of a rigid outer shell which absorbs and dissipates impact energy through permanent deformation.

19. The Modiano patent, British No. 356,578, issued in 1931, was cited by the Patent Office and discloses a motor cyclist’s or aviator’s helmet which utilizes an outer steel shell covered both on the inside and outside by layers of cork. An inner head-lining is adapted to act as a skull cap while providing an empty space between the head-lining and the cork covered shell through which air can circulate to ventilate the interior of the helmet. A sponge rubber crown is interposed between the head-lining and the outer shell to provide further comfort to the wearer. The Modiano patent specification states that the purpose of the cork layer is to absorb shock and avoid bruising of the head.

20. Jeffries patent 1,489,943 relates to a package for mailing fragile articles. The package is composed of upper and lower body portions which may be hingedly secured to one another. The bottom portion is provided with a cavity therein which receives an article to be shipped when the top portion is closed upon the bottom. The upper and lower portions are formed of a material designated as “insulite” which consists of large and small wood or other pulp fibers interlaced in such a way that the body portion is exceedingly porous, and therefore forms an efficient cushioning means.

21. The patents issued to Elsdon, Brodie, Knight, Beppa, and Tress, and the British Medical Journal publication all disclose head protection devices which utilize a substantially rigid outer shell member and have a shock-absorbing or cushioning means disposed interiorly of the outer shell to buffer any blow on the head. The shock-absorbing means disclosed in the patents include materials of cork, papier mache, cotton, felt, lint, wool, and shredded asbestos. The British Medical Journal publication discloses helmet constructions employing a scalloped compressible head band in combination with a sling suspension.

22. The Jones, Maling, Murray, Kunz, and Morrison patents disclose devices in the packaging and footwear arts employing materials which exhibit a degree of inelasticity and energy absorption. These patents do not teach the use of a material which, per se, is the equivalent of the crushable, energy-absorbing, inelastic material employed as a liner in the helmet disclosed and claimed in the patent in suit.

23. The publication by Bashford Dean entitled “Helmets and Body Armor in Modern Warfare” presents a historical background of body protection devices used by man from the eleventh century through World War I. The article discloses many devices which utilize a rigid outer shell member and have a padding or shock-absorbing material interposed between the outer shell and the wearer’s body. The materials used by these early devices as shock- or energy-absorbing means include curled hair, silk matting, leather, loosely woven jute or linen rope. The energy-absorbing materials used by these early devices do not exhibit properties of crushability, inelasticity, and energy absorption to as great a degree as those of the energy-absorbing material used in the helmet disclosed and claimed in the patent in suit.

24. Defendant produced at trial three World War II field helmets from the Ordnance Museum at Aberdeen Proving Grounds, Maryland, which, were on display in this country in the latter part of 1945. Each of these helmets has a substantially rigid outer shell, a suspension system of leather tabs or canvas straps, and a material interposed between the outer shell and the suspension system which exhibits some degree of energy absorption and inelasticity. The materials used for shock absorption include curled hair contained in small fabric bags, loosely consolidated vegetable fiber material, felt, and cotton. Although these helmets disclose the use of a shock-absorbing lining, they do not disclose the use of a lining which exhibits the properties of crushability, inelasticity, and energy absorption of the character of the cellular cellulose-acetate energy-absorbing helmet liner disclosed in the patent in suit.

25. Defendant also urges that the claims relied on in the patent in suit are invalid in view of prior knowledge or use by others of devices for protecting the feet and legs of shipboard personnel against injury from “solid blast” due to high velocity shock waves transmitted through a ship’s structure by explosions aboard the ship or in close proximity to it. More specifically, defendant alleges that some of these devices made use of the energy-absorbing characteristics of crushable, cellular, substantially inelastic materials and that these devices and materials were known to and used by United States Navy officers Dr. E.. H. Draeger, Commander J. T. Dunbar, and Dr. A. Lightbody, and others associated with them, more than 1 year prior to the filing date of the patent in suit.

26. In late 1944 and early 1945, the United States Navy Department began conducting research work at the David Taylor Model Basin near Washington, D.C., the Naval Engineering Experimental Station at Annapolis, Maryland, and the Naval Ordnance Laboratory at Silver Spring, Maryland, for the purpose of evaluating various experimental devices for absorbing shock wave energy and protecting personnel from injury due to solid blast shock waves. The pertinent protective devices investigated include: (1) synthetic cellular plastic foam materials, specifically polystyrene foam of three different densities and cellular cellulose-acetate, (2) structures, including polystyrene foam shoe soles and heels, and metal lieels in tbe form of steel rings or loops of different gauges, botb with and without polystyrene foam cores, and (3) rubber shoe soles and deck mats having a rectangular grid structure formed by deep vertical walled rubber cells capable of collapsing under load. The research and test work of the Navy Department concerning protection against solid blast injuries recognized the concept of absorbing impact energy by irreversibly crushing or otherwise permanently deforming a substantially inelastic material, such as a pad of synthetic cellular plastic foam, thereby dissipating the impact energy. In the light of the court’s disposition of the case, it is unnecessary to determine the effect of this Navy work on the validity of the patent in suit.

27. Defendant also asserts that the patent in suit is invalid because the crash helmet claimed therein was in public use by test pilots of North American Aviation Company more than 1 year prior to the filing of the application for the patent in suit on December 8, 1947. In their development of a crash helmet, Lombard and Roth obtained samples of cellular cellulose-acetate (CCA) which they subjected to static load-deformation tests in July 1946, in the Engineering Department of the University of Southern California (U.S.C.). Shortly after the static tests of CCA were completed, Lombard discussed the new helmet design with experimental engineering groups of local aircraft companies. One of these companies, North American Aviation, showed an interest in helping to develop the helmet for use by their test pilots. As U.S.C. had no facilities available at that time for making helmets, North American offered to make them at their own expense and in their own facilities in accordance with the design of Lombard and Roth and under Roth’s general supervision. It was agreed that North American would test the helmets thus produced for pilot acceptability and that information and reports from the test pilots on the performance of the crash helmets would be furnished to Lombard and Roth. Pursuant to this arrangement, four crash helmets were made by North American in the fall and winter of 1946, the first being completed in September 1946. The four helmets produced for North American pilots utilized a crushable energy-absorbing liner material disclosed in the patent in suit.

28. Defendant has also urged that the United States is entitled to a license and/or related rights under the patent in suit by virtue of Contract No. N6ori-77 between the defendant and the University of Southern California, dated April 9, 1946, and Task Order I thereunder. The copat-entees of said patent were employed by U.S.C. for work on the project covered by said contract and at the time preceding and during the pendency of the application for said patent. Lombard’s salary came, almost entirely, from funds under the Navy contract and he worked almost full-time on that work during the entire existence of the contract. Throughout the contract he was “co-responsible investigator” along with another colleague. Loth’s formal assignment to work under the Navy contract came after the invention in suit is claimed to have been made.

29. Work authorized by the Government to be undertaken by the University of Southern California under Contract N6ori-77 is set forth in “Task Order I,” which forms a part of the contract and states in part as follows:

(A) The work to be performed by the Contractor hereunder shall consist of the following:
(1) The Contractor shall, in accordance with any instructions issued by the Director of the Planning Division, Office of Eesearch and Inventions, furnish the necessary personnel and facilities and shall conduct research, using a human centrifuge, on the physiological, biochemical and anatomical effects of acceleration on the body, relative to pilot position in high speed aircraft, and shall investigate and study:
(a) Physiological Effects: The mechanisms operating in the pooling of blood; dynamics of circulation within the skull and the laws governing intracranial pressure; the load on the heart and its capacity to operate under high acceleration; and the vasomotor reflexes.
(b) Biochemical Effects: The changes in the blood in its passage through the brain under conditions of reduced flow incident to acceleration.
(c) Anatomiccil Effects: The capacity of the tissues to withstand high acceleration without tearing, rupturing, or bruising; and the displacement of organs m the body under high acceleration.

30. Section 17 of Contract No. N6ori-77 sets forth the patent rights under the contract in part as follows:

SECTION 17 — PATENT EIGHTS
(a) Where used in this Section, and not elsewhere in this contract, the expression “Subject Invention” means each invention, improvement and discovery (whether or not patentable) conceived or first actually reduced to practice (i) in the performance of this contract, * * * or (ii) in the performance of any research or development work relating to the subject matter hereof which was done upon the understanding that this contract or any subcontract hereunder would be awarded * * *.
(b) Contractor agrees to and does hereby grant to the Government an irrevocable, non-exclusive, nontransferable and royalty-free license to practice, and cause to be practiced for the Government, throughout the world, each Subject Invention in the manufacture, use and disposition according to law of any article or material, and the use of any method * * *.

31. A U.S. Navy “Clearance Memorandum for Procurement of Besearch,” dated May 2, 1946, states that Contract No. N6ori-77 was to be a continuation of an earlier Government contract, No. OEMcmr-288, of March 4, 1943, between the University of Southern California (U.S.C.) and the Office of Scientific Besearch and Development (OSBD). The OSBD contract was undertaken for the purpose of conducting studies and experimental investigations in aviation physiology with particular attention to the effects of acceleration, decompression, anoxia, and cold, and methods to combat these effects. In connection with this work a large human centrifuge was constructed on the U.S.C. campus. The research carried on under the OSBD contract was divisible into two main parts: (1) investigations of whole body acceleration, such as the effects of pilot position on G-tolerance and the testing of anti-G suits, that involved the use of the centrifuge and (2) investigations of anoxia, such as physiological effects of reduced atmospheric pressure and the testing of pressure suits, that involved the use of a high-altitude chamber. The OSBD contract had a termination date of June 30,1946.

32. Defendant has cited a number of documents which, are dated prior to and subsequent to the date of Government Contract N6ori-77. These documents constitute research requirements, contract proposal correspondence, publications, and progress reports between the U.S. Navy Department and U.S.C. It is defendant’s contention that passages in these documents disclose an intention by the Navy Department (as well as by U.S.C.) to include head impact or head acceleration as part of the general problem of acceleration and, more specifically, to include the design and development of a crash helmet in the work performed by U.S.C. under Navy Contract N6ori-77. From all the evidence it is found that, at the least, Navy Contract N6ori-77 did at all times cover head impact and head acceleration research, including the study in that connection of energy-absorbing materials. Such research was done by the Department of Aviation Medicine at U.S.C., during the period of the conception and reduction to practice of the invention in suit, by Lombard, Noth, and others. It is also found that both parties to the Navy contract expected that protective gear or devices could well result or develop from the knowledge to be acquired, or being acquired, under the contract.

33. Lombard and Noth, the co-patentees, benefited from, and used, in making the invention in suit, the research on head impact and head acceleration, including studies of energy-absorbing materials, which was carried on by the Department of Aviation Medicine at U.S.C. after the effective date of Navy Contract N6ori-77. They also probably gamed aid in making the invention from their knowledge of and proximity to the other acceleration research carried on at U.S.C. under the Navy contract.

34. Defendant contends that the subject crash helmet development by Noth and Lombard was within the scope of Government Contract N6ori-77 by virtue of certain helmet development activity carried on within the U.S.C. centrifuge building, and because some instrumentation used to test the dynamic characteristics of cellular cellulose-acetate and used in later studies of impact acceleration forces upon the human head was developed under said contract. It is found that the subject helmet was not reduced to practice in the U.S.C. centrifuge building and that the instrumentation used in conjunction with helmet liner tests was paid for from the Aircraft Industries Association Fund.

35. Defendant has also urged that the patent claims in suit are invalid because the patent specification fails to comply with the first paragraph of 35 U.S.C. § 112 in that it does not “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains or with which it is most nearly connected, to make and use the same, and (does not) set forth the best mode contemplated by the inventor of carrying out his invention.” More specifically, defendant has alleged the patent specification to be defective because it is silent as to the magnitude of blows which the human body can withstand in the absence of a protective device and as to the level of force at which the protective layer would commence crushing. Defendant further contended that the specification is defective because there is no disclosure of the relationship between the thickness of the crushable layer with respect to the magnitude of the blow desired to be protected against.

36. Defendant has urged that the claims in suit are invalid on the grounds that the claims utilize functional language and do not include details of structure which defines the desired beneficial result, and further, that the claims are vague and indefinite.

37. Plaintiffs contend that the claims in suit have been infringed by crash hehnets made by or for the defendant by the Gentex Corporation. The accused helmets comprise a relatively hard rigid outer shell, an energy-absorbing liner disposed interiorly adjacent the outer shell of an inelastic synthetic foam plastic material, and resilient or elastic pads that form a soft inner liner adapted to comfortably accommodate the helmet to the wearer’s head. It is found that the claims in suit read upon the accused helmets.

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 plaintiffs are not entitled to recover and the petition is dismissed. 
      
      The court acknowledges its indebtedness to Trial Commissioner Donald E. Lane from whose opinion, prepared at the direction of the court under Rule 57(a), we have borrowed. Though we agree with the trial commissioner that the petition should be dismissed, we place our holding on a ground he rejected and do not reach the basis on which he relied or other issues he discussed.
     
      
       Other defenses include: (1) the claims are invalid under 35 U.S.C. § 102 in view of the prior art and because the alleged invention was in public use in this country more than one year prior to the patent application; (2) the claims are invalid under 35 U.S.C. § 112 for indefiniteness and lack of disclosure; (3) the United States has a “shop right”, as well as an immunity under 28 U.S.C. § 1498(a).
     
      
       Plaintiffs claim that the invention tvas conceived in June-July 1946 and first reduced to practice not later than the fall of 1947. The patent application -was filed early in December 1947.
     
      
       This study was apparently first presented publicly in June 1948 by a group including Lombard and Roth. In 1949, a report by Lombard and Roth under the Navy contract characterized “a check on information relating to impact acceleration of the head” as “a part of the program of investigation of the physiological effects of acceleration on the human body, conducted under Contract N6ori-77, Task I [the Navy contract].”
     
      
      
         The defendant points out that the contract was explicitly one for research and development.
     
      
       U.S.C never referred specifically to tie helmet project in its reports to the Navy under the contract, and Lombard and Roth seem to have told people that the project was wholly non-federal.
     
      
       In this respect it is significant that there was no amendment of the contract; if impact research was covered in 1948-1950 (as plaintiffs must admit) it was likewise covered in 1946-1947.
     
      
       It should be recalled that Lombard’s salary came, almost entirely, from Navy funds and he worlted almost full-time on the Navy contract during its entire existence. From the beginning of that agreement to its end he was “eo-responsible investigator” (as the final report on the contract phrases it), along with another colleague. The private funds used by U.S.C. for the helmet project went to the testing of the head-gear (including instrumentation for testing).
     
      
      
        Investigation of Government Patent Practices and Policies, Report and Recommendations of the Attorney General to the President, Vol. I, p. 88 — 89 (1947).
     
      
       A similar analogy is the common law “shop right”. United States v. Dubilier Condenser Corp., 289 U.S. 178, 188-89 (1933) ; Consolidated Vultee Aircraft Corp. v. Maurice A. Garbell, Inc., 204 F. 2d 946, 949 (C.A. 9, 1953), cert. denied, 346 U.S. 873.
     
      
       The court said (p. 353) : “Except for the development processes carried on at the expense of the Government, under its supervision and with its suggestions in collaboration and contractual relationship with the plaintiff, these patents would not have come into existence.”
     
      
      
         See the President’s Memorandum and Statement of Government Patent Policy, October 10, 1963, 28 Fed. Reg. 10943 ; Symposium on Patents, Copyrights, and Trademarks, 25 Fed. Bar. J. 1 (Winter 1965) ; Stedman, The U.S. Patent System and Its Current Problems, 42 Tex. L. Rev. 450, 487-94 (1964) ; Symposium on Government Contract Patent Policy, 21 Fed. Bar J. 3 (Winter 1961) ; Investigation of Government Patent Practices and Policies, Report and Recommendations of the Attorney General to the President, Vol. I, pp. 4-5, 5, 100, 104 (1947).
     