Opinion
No. M-231.
April 7, 1941.
Charles R. Fenwick, of Washington, D.C. (William H. Mondell, of Waynesboro, Va., and Hugh H. Obear, of Washington, D.C., on the brief), for plaintiff.
H.L. Godfrey, of Washington, D.C., and Francis M. Shea, Asst. Atty. Gen. (J.F. Mothershead, of Washington, D.C., and Frank H. Harmon, of New York City, on the brief), for defendant.
Before WHALEY, Chief Justice, and GREEN, LITTLETON and WHITAKER, Judges.
Suit by the Myers Arms Corporation against the United States for infringement of a patent.
Petition dismissed.
This case having been heard by the Court of Claims, the court, upon the evidence adduced, makes the following special findings of fact:
1. The plaintiff, Myers Arms Corporation, is a corporation organized and existing under and by virtue of the laws of the State of New York, with offices at 331 Madison Avenue, New York, N Y
2. Under date of June 12, 1931, George Francis Myers executed an instrument in writing assigning to the Myers Arms Corporation the exclusive right, title, and interest in and to the patent in suit including the right of action and recovery for past infringement.
The original instrument, which was not recorded in the United States Patent Office, is plaintiff's exhibit 2, and is by reference made a part of this finding.
3. On August 23, 1909, George Francis Myers filed an application for a patent in the United States Patent Office, Serial No. 514,165, for improvements in flying machines. One of the objects stated was "to improve the means for supporting and operating a cannon."
The original application contains the following disclosure relative to the mounting of a gun or cannon on an aeroplane:
"For use in warfare the flying machine is provided with a cannon 800 which is preferably arranged above the body or frame in rear of the stabilizer and mounted on the frame by the means which are shown in figures 1, 2, 26, 27, and 28 and which are constructed as follows:
"80 represents a circular track arranged horizontally on the bottom of the turret or gunner's compartment in the frame or body and surrounding an opening of substantially the same diameter in the bottom of the body. The gunner's compartment or turret is preferably made square in cross section, as shown in figure 27, by extending the sides of the body for this purpose. Within the gunner's compartment and projecting upwardly through an opening in the top of this compartment is a horizontally rotatable carriage 81 which has an unobstructed interior and which preferably comprises a lower circular base or ring 82 provided with wheels 83 running on the track 80 and a pair of standards 84 which project upwardly from opposite sides of the base through the top opening of the gunner's compartment and to the upper ends of which above the main frame or body the cannon is pivoted by means of horizontal trunnions 85. By turning the carriage horizontally in the frame and the cannon vertically on the carriage it is possible for the gunner to aim the cannon in all directions within a hemisphere above the frame or body of the machine and also downwardly through the body into different parts of a conical field, thereby commanding practically the entire space around the flying machine and affording the maximum capacity for attack or defense.
"The carriage is provided with a seat 86 for the gunner whereby the latter is supported by the carriage and remains in a definite location relative to the cannon as the carriage is rotated."
Figures 1 to 5, inclusive, of the patent in suit which comprise all the drawings thereof are similar in character to Figures 12, 26, 27, and 28 of the drawings of the original application, and the structures disclosed in the drawings of the patent in suit are based upon the drawings of the original application.
4. Claims 29 to 34 of the original application refer to the combination of a flying machine and a cannon. Claims 29 and 34, which are typical of this group, are as follows:
"29. A flying machine comprising a body having a gunner's compartment provided with an opening to the exterior of the body, a carriage rotatable within said compartment and projecting through said opening, and a cannon mounted on the carriage outside of said body.
"34. A flying machine comprising a body having a gunner's compartment provided with an opening to the exterior of the body, a carriage rotatable within said compartment and projecting through said opening, a cannon mounted on the carriage outside of said body, and a gunner's seat arranged on said carriage."
On December 7, 1909, the Examiner in the Patent Office rejected claims 29 to 34 in the following language: "Claims 29-34 inclusive, are rejected for lack of combination. There is no patentable relation between a flying machine and a cannon carried thereby. If applicant has made improvements in a mount for a cannon, he should embody his claims thereto in a separate application which would properly be classified in the class of ordinance [sic]."
On November 21, 1910, claims 29 to 34 were cancelled by the patentee without comment and no claims referring to the gun or gun mount were thereafter contained in this original patent application.
A copy of the file wrapper and contents, defendant's exhibit 22, and a copy of the drawings of the original Myers application, defendant's exhibit 22a, are by reference made a part of this finding.
5. Under date of December 1, 1916, the patentee, Myers, filed application Serial No. 134550 in the United States Patent Office as a divisional application of the original application referred to in findings 3 and 4, supra.
As filed, the divisional application stated as follows, with respect to the objects of the invention:
"This invention relates to vehicles, and particularly to that class thereof that are used in warfare.
"It consists of a gun or cannon that can be turned in any direction on a vehicle.
"It further consists in improved means for supporting and operating the gun or cannon."
Claim 1 as filed read as follows: "A vehicle comprising an elongated box-shaped body with tapering ends, means for driving and steering the vehicle, a turn table in the said body, a carriage mounted on the said table, and a cannon mounted on the said table."
Under date of November 23, 1926, this divisional application matured into the patent in suit No. 1,608,109.
A copy of the file wrapper, contents and original drawings, defendant's exhibit 23, and a copy of the references cited during the prosecution of this application, defendant's exhibits 26-A to 26-II, and defendant's exhibits 27-A to 27-T, are by reference made a part of this finding.
6. There is no evidence to establish a date of conception prior to August 23, 1909, the filing date of the original application of which the patent in suit is a division.
7. The title of the patent in suit is "Vehicle," the text of the specification stating that the invention relates to vehicles, and particularly to the class thereof that is used in warfare.
The patent states the object of the invention in the following phraseology:
"The object of the invention is to transport heavy bodies through the air, especially guns, cannon or other instruments of destruction.
"It consists of a gun or cannon or other instrument of destruction that can be turned in any direction on the vehicle.
"It further consists in improved means for supporting and operating the gun or cannon or other instrument of destruction. It also consists in certain novel features, which will now be described and then particularly pointed out in the claims."
The specification further indicates that the concept of the invention disclosed therein is not limited solely to aeronautical vehicles but contemplates as well a vehicle adapted to travel over the surface of the ground.
The following quoted phraseology is indicative: "The vehicle is constructed and operated substantially and preferably as follows, it being understood that the same may be used as an aeronautical vehicle, or as a vehicle adapted to travel at speed over the surface of the earth in which case the aeroplanes take off more or less of the weight of the machine from the earth-engaging means."
A copy of the patent in suit, plaintiff's exhibit 1, is by reference made a part of this finding.
8. The specific embodiment disclosed and illustrated in the patent in suit comprises a vehicle having an elongated fuselage or body with wheels and which is provided with three sets each of five superposed wings (termed aeroplanes in the specification) arranged in tandem, which sets are positioned at the front, adjacent the tail surface and at the center of the fuselage.
The multiple propellers and the driving motor are located between the front and rear sets of wings. The pilot's compartment or cockpit is located between the front and the middle sets of wings.
Between the center and rear sets of wings there is provided a gunner's compartment or cockpit, the same being sufficiently large to receive not only the gunner but the gun mounting.
Figures 3, 4, and 5 of the patent in suit are reproduced in the findings and are illustrative of the details of this compartment and the gun mounting. As shown in these drawings and described in the patent, the gun mount comprises an annular carriage 82 rotatable through 350 degrees about its central axis, the same being provided with a series of rollers or wheels 83 running on a circular track 80. The annular carriage supports a tripod-like frame which in turn supports at its upper end a gun or cannon 800 mounted in trunnions so as to be capable of adjustment through a vertical arc.
As shown, the gun is provided with a sighting telescope and also with a periscope which is indicated as being useful when firing in a vertical position.
The tripod-like frame is provided with a gunner's seat at 86 so that as the carriage and frame are rotated the gunner moves bodily in a circumferential path within the cockpit and therefore remains seated in a convenient operating position behind the breech of the gun at all times.
An opening is provided in the bottom of the cockpit and in the rotating platform so that if desired the gun muzzle may be depressed and obtain a downward cone of fire limited or designated by the extent of the area or opening in the bottom of the cockpit.
9. The disclosure relating to the gun carriage and including figures 3, 4 and 5 of the drawings which are merely diagrammatic in character and not working or shop drawings, does not contain certain detail features which would make the Myers device practicable.
As disclosed, there is nothing to prevent the annular carriage from leaving the circular track in the bottom of the cockpit should the aeroplane strike an air pocket or undergo a severe angular inclination. There is also no means for locking the annular gun carriage against undesired rotative movement around the track.
It is, however, within the knowledge of an ordinary mechanic to construct a track with a conventional overhanging flange and to provide a conventional ratchet and pawl, or a brake to lock the annular carriage in any desired position, and the disclosure is directed to an operative construction within the meaning of the patent statutes.
10. The claims in issue in the patent in suit are claims 1, 2, 3, 4, 10, 11, and 12. The phraseology of all these claims is directed to an aeroplane structure in combination with a gun and gun carriage.
In order to more easily consider the structure defined by the claims, the elements and phraseology relating to the gun and gun carriage structure, per se, have been italicized and the claims have been paraphrased as indicated in the quoted claims below:
"Claim 1
"(a) In a flying machine of the heavier than air type, the combination of a body elongated in form and extending in the direction of travel, an aeroplane supporting surface transversely disposed with reference to the main body and projecting laterally therebeyond,
"(b) said main body having a cockpit longitudinally removed from said transverse aeroplane,
"(c) a platform carried by said main body and disposed within said cockpit,
"(d) a gun carriage adjustable in a horizontal plane about said platform,
"(e) a gun mounted on said carriage which is capable of adjustment in the vertical planes for firing in the upward direction,
"(f) means for propelling and directing the movements of said aircraft and the gun, whereby the craft may be driven to the point desired and the gun may be fired unobstructedly in the upward direction unhindered by the sustaining, propelling and controlling means of the craft.
"Claim 2
"(a) In a flying machine of the heavier-than-air type, the combination of a body elongated in form and extending in the direction of travel, an aeroplane supporting surface transversely disposed with reference to the main body and projecting laterally therebeyond.
"(b) said main body having a cockpit at a point longitudinally removed from said transverse aeroplane,
"(c) a platform carried by said body and disposed within the cockpit,
"(d) a carriage mounted on said platform which is capable of adjustments in the horizontal plane,
"(e) a gun borne by said carriage at a point elevated substantially on a level with the upper part of said main body,
"(f) said gun being capable of adjustment in the vertical planes for fire in upward directions,
"(g) means for propelling and directing the movements of said craft, whereby the craft may be propelled and directed to the point desired and the gun may be fired unobstructedly in the upper direction unhindered by the sustaining, propelling and controlling means.
"Claim 3
"(a) In a flying machine of the heavier-than-air type, the combination of a body elongated in form and extending in the direction of travel, an aeroplane supporting surface transversely disposed with reference to the main body and projecting laterally therebeyond, said aeroplane being disposed slightly above the level of the main body upper surface and —
"(b) Said main body having a cockpit at a point longitudinally removed from said transverse aeroplane, said cockpit being large enough to accommodate the mounting of a gun and an operator,
"(c) a circular runway carried by said main body and disposed about the cockpit,
"(d) a gun carriage mounted on the circular ring and capable of adjustments in the horizontal plane,
"(e) a gun borne by said carriage at a point elevated substantially on a level with the upper part of said main body, said gun being capable of adjustments in the vertical planes for fire in upward directions,
"(f) means for propelling and directing the movements of said craft, whereby the craft may be propelled and directed to the point desired and the gun may be fired unobstructedly in the upper direction unhindered by the sustaining, propelling and controlling means.
"Claim 4
"(a) In a flying machine of the heavier than air type, the combination of a body elongated in form and extending in the direction of travel, an aeroplane supporting surface transversely disposed with reference to the main body and projecting laterally therebeyond,
"(b) Said main body having a cockpit longitudinally removed from said transverse aeroplane,
"(c) a circular platform carried by said main body within the cockpit and disposed below the level of the upper surface of the main body,
"(d) a gun carriage adjustable in a horizontal plane about said platform, and adapted to carry a gun support slightly above the level of the upper surface of the main body,
"(e) a gun mounted on said support which is capable of adjustment in the vertical planes for firing in the upward direction,
"(f) means for propelling and directing the movements of said aircraft and the gun, whereby the craft may be driven to the point desired and the gun may be fired unobstructedly in the upward direction unhindered by the sustaining, propelling and controlling means of the craft.
"Claim 10
"(a) In a flying machine of the heavier-than-air type, the combination of an inclosed body elongated in form and extending in the direction of travel, a sustaining device transversely disposed with relation to the said body and projecting therebeyond,
"(b) said body having an opening therein or cockpit,
"(c) a platform or circular track carried by the said body and disposed about the said opening,
"(d) a gun carriage adjustable in a horizontal plane about the said platform, trunnion means mounted on the said carriage,
"(e) a gun mounted on the said trunnion means which is capable of adjustment in the vertical direction,
"(f) the said platform, carriage, trunnion means and the said gun when in its position for firing in the vertical direction being encompassed by the projection of the outer wall or sides of the said cockpit,
"(g) and means for propelling and directing the movements of the machine and the said gun whereby the machine may be driven to the point desired and the gun fired unobstructedly in the upward direction unhindered by the sustaining, propelling and controlling means of the machine.
"Claim 11
"(a) In a flying machine of the heavier-than-air type, the combination of an inclosed body elongated in form and extending in the direction of travel, a sustaining device transversely disposed with relation to the said body and projecting therebeyond,
"(b) said body having an opening or cockpit therein,
"(c) a platform or circular track carried by the said body and disposed about the said opening,
"(d) a gun carriage adjustable in a horizontal plane about the said platform, trunnion means projecting from the said carriage,
"(e) a gun mounted on the said trunnion means and which is capable of adjustment in the vertical direction, and when trained upwardly perpendicularly to the longitudinal center line of the said body is so mounted as to project below the top of the same,
"(f) and means for propelling and directing the movements of the machine and the said gun whereby the machine may be driven to the point desired and the gun fired unobstructedly in the upward direction unhindered by the sustaining, propelling and controlling means of the machine.
"Claim 12
"(a) In a flying machine of the heavier than air type, the combination of an inclosed body elongated in form and extending in the direction of travel, a sustaining device transversely disposed with relation to the said body and projecting therebeyond,
"(b) said body having an opening or cockpit therein,
"(c) a platform or circular track carried by the said body and disposed about the said opening,
"(d) a gun carriage adjustable in the horizontal plane about the said platform, trunnion means mounted on the said carriage and movable therewith,
"(e) a gun mounted on the said trunnion means and which is capable of adjustment in the vertical direction and when fired perpendicularly is enclosed in part within the said cockpit,
"(f) and means for propelling and directing the movements of the machine and the said gun whereby the machine may be driven to the point desired and the gun fired unobstructedly in the upward direction unhindered by the sustaining, propelling and controlling means of the machine."
11. Using the specification of the patent in suit as a dictionary by which to interpret the meaning of words or phrases used in the claims, it is found in lines 62 to 64, page 2 of the specification, that the term "platform" as used in the claims is synonymous with the circular track 80 upon which the gun carriage is rotatable.
The part of the specification referred to reads as follows: "80 represents a platform or circular track arranged horizontally in the turret or gunner's compartment in the frame or body."
Alleged Infringing Structures.
12. The charge of infringement in this case is predicated on two different types of structure. The first is known as the Scarff gun mount and in the present case it is exemplified by a Scarff mount upon a DeHavilland-4 aeroplane. This structure is illustrated in plaintiff's exhibits 11, 12, 15, 17, 17-A to 17-N, 18, 19-A and 20-A, and defendant's exhibits 3-1 to 3-6, inclusive.
The claims in issue as to this type of mount are 3, 10, 11, and 12.
The second type of gun mount construction is known as the Navy 3-A and 3-B Mounts and is illustrated in plaintiff's exhibits 21, 21-A, 22, 22-A, defendant's exhibits 17 and plaintiff's exhibit 21-B.
The claims in the patent in suit in issue as to this second type of mount are 1, 2, 3, 4, 10, 11, and 12.
The above-enumerated exhibits are by reference made a part of this finding.
13. The Scarff gun mount on a DeHavilland-4 aeroplane which has been used as an exemplification of the alleged infringing structure is now located in the Smithsonian Institute, Washington, D.C., and was received therein on April 8, 1919, and has been thereafter on public exhibition. The particular Scarff gun mount on the aforesaid DeHavilland-4 aeroplane was purchased by the United States from the Wolverine Brass Works, Grand Rapids, Michigan, under S.C. Order dated November 5, 1917, paid for at that time, and installed on this aeroplane as of May 14, 1918.
The aforesaid aeroplane was constructed by the Dayton-Wright Co., Dayton, Ohio, for the United States Government and delivered and paid for in the latter part of 1917.
14. DeHavilland-4 aeroplanes with Scarff gun mounts and gun constructed as shown in plaintiff's exhibits 11, 12, 15, 17, 17-A to 17-N, 18, 19-A, and 20-A, and defendant's exhibits 3-1 to 3-6, were purchased, paid for, and delivered to the United States Government by private manufacturers in the United States to the extent of 155 by the week of May 25, 1918. Of this number, 106 were then in use in the United States and 49 were then in France in use by the United States Expeditionary Force.
Subsequent to November 23, 1926, the issue date of the patent in suit, and prior to July 20, 1931, the date of the petition in this case, the United States Army has operated planes equipped with the Scarff gun mount.
There is no satisfactory evidence that any Scarff gun mounts were manufactured for or by the Government during this period.
15. The Scarff mount referred to in finding 13 is illustrated in the photograph of the same reproduced herewith, which photograph forms the basis of plaintiff's exhibit 19-A.
For the purpose of convenient comparison of similar parts in this photograph with the patent in suit, they are referred to by the same reference numerals so far as is possible.
The construction of the Scarff mount here shown comprises a base ring or circular track 80 rigidly secured on the top surface of the fuselage or body and spaced outwardly from the edge of the cockpit about two inches. The annular movable ring 82 is concentrically mounted to rotate on the stationary ring 80, both of the rings being of a greater diameter than the cockpit.
The movable ring 82 of the Scarff mount is provided with a pair of spaced upstanding lugs 82a in which a hinged bow 84 is mounted. A pair of similarly spaced upstanding notched quadrants 84a is adapted to support the bow through a series of locked positions from the horizontal upwardly to about 55°. A handle convenient to the gunner controls locking mechanism for simultaneously locking the bow into any of its positions with respect to the quadrants and the movable ring 82 at any desired rotative position with respect to the fixed ring or track 80.
The center of the hinged bow 84 is provided with a socket which is adapted to receive the lower end of a goose-neck member 84b, the upper end of which is provided with a pivot or trunnion pin 85 which in turn carries a mounting piece 85a upon which two machine guns 800 are fixed, the pivot pin thus permitting elevation or depression of the guns independently of the bow 84.
The goose-neck also provides for a limited rotative longitudinal movement of the guns relative to the bow.
16. Various positions of the guns and their associated mountings are shown in photographs, plaintiff's exhibits 19-A, 20-A, and defendant's exhibits 3-1 to 3-6, inclusive.
When the bow is substantially horizontal the gun pivot is positioned outside and beyond the two rings, thus facilitating the firing of the gun downwardly over the outer side of the fuselage.
The bow is substantially counterbalanced, and the raising of the same, and hence the gun pivot, increases the permissible range of fire with respect to the aeroplane and enables the gunner to increase the maximum range of fire without substantial changes in his position. The gunner may rotate the movable ring 82 with respect to the fixed ring 80 by means of the pressure of the lower rear extremity of his body against a backrest 86.
During operation of the guns the gunner is positioned inside the two rings with his feet on the floor of the cockpit.
17. When the bow is elevated into the topmost notch of the quadrants, the guns of the Scarff mount may be elevated upwardly to about 85 degrees from the longitudinal center line of the aeroplane. From this angle of 85 degrees up to an exact perpendicular elevation (90 degrees) from the longitudinal center line of the aeroplane, the gear casing P on the guns engages the bow and while the guns therefore by forcing or springing may be pointed at 90 degrees, or mathematically perpendicular to the longitudinal center line of the aeroplane, from 85 degrees to 90 degrees, flexibility and movement of the guns relative to the bow cease, and they cannot be aimed and the gun mount is not intended to be used in combat while the guns are thus locked to the bow in non-aiming position.
The guns when trained upwardly to 85 degrees, which is substantially perpendicular to the longitudinal center line of the aeroplane, do not in any way project below the top of the body of the aeroplane nor is any part of the guns, when set in a substantial perpendicular position, enclosed within the cockpit. Instead, the lower ends of the guns are positioned a substantial distance above the body of the aeroplane and above the cockpit.
When the bow is adjusted into the lower notches the guns may be said to be mounted at a point substantially on a level with the upper part of the aeroplane. See defendant's exhibits 3-4, 3-5, and 3-6.
18. When not limited to the specific embodiment disclosed and illustrated in the patent in suit in which the circular track and annular ring are located in the bottom of the cockpit and about an opening in the bottom thereof, the phraseology of claims 3 and 10 is applicable to the Scarff mount.
19. Claim 11, after defining the aeroplane as a " body having an opening or cockpit therein," defines the mounting of the gun in the following phraseology: " A gun mounted on the said trunnion means and which is capable of adjustment in the vertical direction, and when trained upwardly perpendicularly to the longitudinal center line of the said body is so mounted as to project below the top of the same."
While 85 degrees may be considered substantially perpendicular and the phrase of "trained upwardly perpendicularly to the longitudinal center line of the said body" is applicable, the guns of the Scarff mount are not so mounted as to project below the top of the cockpit, and the terminology of this claim is therefore not applicable to the Scarff mount.
20. Claim 12, of the patent in suit, defines the gun mount in the following phraseology: "A gun mounted on the said trunnion means and which is capable of adjustment in the vertical direction and when fired perpendicularly is enclosed in part within the said cockpit."
When the guns of the Scarff mount are in the 85-degree position or even forced into the 90-degree position and locked to the bow, no part of them is enclosed within the cockpit. The phraseology of this claim is not applicable to the Scarff mount.
21. The Navy 3-A and 3-B gun mounts were used in connection with a Curtiss aeroplane, and are shown in plaintiff's exhibits 21, 21-A, 21-B, 22 and 22-A, and defendant's exhibit 17. These gun mounts were first installed on a Navy aeroplane January 1, 1931, and there is no satisfactory evidence that their use was other than for the purposes of experimenting with these types of gun mounts.
22. The Navy 3-A gun mount is best illustrated in plaintiff's exhibit 21-B which is reproduced in the findings. For the purpose of convenient comparison with the patent in suit, similar elements in this schematic drawing, referred to above, are designated by the same reference numerals used in the patent in suit.
The Curtiss aeroplane on which this type of gun mount was used is of the double cockpit type with a set of controls in each cockpit for piloting the aeroplane. The gun mount is located in the rear cockpit and, as shown in the following schematic drawing, comprises a semicircular rail or track 80 which is positioned around the rear portion of the top edge of the cockpit and slightly below the same. This semicircular track is not horizontal but is inclined upwardly and to the rear at an angle of 30 degrees.
A gun carriage 82 is so mounted on rollers as to embrace the semicircular track 80, being thus interlocked to the inclined track and capable of movement along the same, a handle being provided for such movement. A detent lock is provided near the handle, which is adapted to engage a plurality of holes in the semicircular track, thus providing means for locking the gun carriage in any of a plurality of positions relative to the inclined track.
The gun carriage 82 is provided with a goose-neck member 84 which is pivotally mounted therein, the goose-neck member carrying at its upper end trunnion mountings 85 for a machine gun 800. The gun is thus capable of both train and elevational movement with respect to the gun carriage 82 in any of its positions relative to the inclined track 80.
The maximum elevation of which the gun is capable is 77 degrees from the horizontal as shown in defendant's exhibit 17. When in this maximum elevated position it would be difficult, if not impossible, for the gunner to get under the gun to look through the sights; the gunner in his operation of the gun either remains seated on a fixed seat 86 or may stand on the same to depress the muzzle of the gun over the sides of the cockpit.
23. The 3-A gun mount and the 3-B gun mount are substantially identical in construction and operation, the 3-B gun mount differing only in that the forward ends of the circular track are slightly extended in a straight line along the edge of the cockpit so that the track is of a more pronounced U-shape with the ends thereof curved out of the plane of the main curved portion of the track which is inclined at 30 degrees to the horizontal.
24. All the claims in issue with respect to the Navy 3-A and 3-B gun mounts, viz., 1, 2, 3, 4, 10, 11, and 12, carry the express limitations in item (d) (see finding 10) that the gun carriage is adjustable in a horizontal plane. This defining clause with reference to the invention in suit is not applicable to the Navy 3-A and 3-B gun mounts, in which the track on platform extending about the cockpit of the aeroplane is inclined at an angle of 30 degrees and the phraseology of the above-enumerated claims is, therefore, not applicable to the Navy 3-A and 3-B gun mounts.
Prior Art and Knowledge.
25. Prior to August 23, 1909, the filing date of the original Myers application of which the patent in suit is a division, there were available to the public the following patents and publications:
Patents.
United States, Gruson, 367,617, Oct. 2, 1887 (defendant's exhibit 6).
United States, Canet, 410,968, Sept. 10, 1889 (defendant's exhibit 8).
United States, Spiller, 480,215, Aug. 2, 1892 (defendant's exhibit 9).
United States, Anderson, 422,003, Feb. 25, 1890 (defendant's exhibit 10).
United States, McClean, 749,214, Jan. 12, 1904 (defendant's exhibit 15).
Great Britain, Simms, 7,387, 1899 (accepted) (defendant's exhibit 7).
France, Voisin, 394,438, 1908 (délivré) (defendant's exhibit 14).
Publications.
Textbook of Ordnance and Gunnery, by R.R. Ingersoll, published 1894, page 122, and Plate 18 (defendant's exhibits 19 and 19-A).
Description of Modern Gun Mounts in the United States Navy, published 1894, page 13, and Plate 12 (defendant's exhibit 18).
Textbook of Ordnance and Gunnery, by R.R. Ingersoll, published 1899, pages 184 and 185, and Plate 11 (defendant's exhibit 2).
Black and White, published in Great Britain November 28, 1903, page 793 (defendant's exhibit 11).
The Pall Mall Magazine, published in Great Britain August 1908, pages 144 and 145, and accompanying drawing (defendant's exhibit 12).
United States patent to Voller, No. 1,041,384 (defendant's ex. 16), was issued October 15, 1912, on an application filed May 3, 1909, and prior to the filing date of the original Myers application.
None of the above art was cited by the Patent Office or considered by the Examiner during the prosecution of the Myers application maturing into the patent in suit with the exception of the French patent to Voisin, No. 394,438 (defendant's exhibit 14).
Copies of the foregoing patents and publications, together with a translation of the French patent to Voisin (defendant's exhibit 14-A), are by reference made a part of this finding.
26. French patent to Voisin, No. 394,438 (defendant's exhibit 14), discloses a flying machine of the heavier-than-air type. As disclosed the same comprises an elongated body or fuselage extending in the direction of travel with a plurality of wings or supporting surfaces located both at the forward end and at the rearward end transversely disposed with respect to the body or fuselage and projecting laterally therebeyond. The drawings show some of the transverse surfaces disposed slightly above the body of the main surface.
The fuselage or body of the aeroplane is provided with a cockpit longitudinally removed from the transverse sustaining surfaces and located between the forward sustaining surfaces and the rearward sustaining surfaces. The cockpit is elongated or oval in character and is provided with an upper rim substantially flush with the top of the fuselage.
The aeroplane is provided with means for propelling the same comprising an engine and a tractor propeller and also means for directing the movements of the aircraft which includes control surfaces and operating mechanism therefor located in the cockpit.
27. United States patent to Voller, No. 1,014,384 (defendant's exhibit 16), is directed to the concept of a gun mounted in an aeroplane, the specification specifically indicating that the gun mount therein disclosed is for use on airships, motorcars, or the like. This patent, as is shown in Figure 1 reproduced below, discloses a gun mounting having a set of trunnions in which a gun is mounted for adjustment in a vertical plane, the rotation of the trunnion bracket being provided for by means of a movable circular ring rotating on ball bearings which rotates on the rim of a second fixed circular race or track placed at the top of the conical portion of a fixed base. The gun may therefore be trained horizontally to any desired position and may be also adjusted through a large elevational angle on its trunnions.
It is entirely obvious that when the Voller gun and mount are located in the cockpit of an aeroplane they would be naturally so positioned that the gun would be supported by its trunnions slightly above the top of the cockpit, or to use the phraseology of claim 4 of the patent in suit, "adapted to carry a gun support slightly above the level of the upper surface of the main body."
Such location would be essential in order that the gun might be aimed and fired over the edge of the cockpit.
28. United States patent to Gruson, No. 367,617 (defendant's exhibit 6), discloses a vehicle having an armored gun mount as disclosed in Figure 1 of the drawing illustrated in the findings.
The gun mount comprises a stationary circular supporting track or platform rigidly positioned at the top of the gunner's compartment just below the top edge. The movable circular portion of the gun carriage rotates on rollers carried by this circular track. This movable ring portion carries trunnion mountings in which is fixed a gun capable of elevational movement in a vertical plane. The extent of the gun elevation is dependent upon the arc of the elevating rack and the length of the slot in the armored top, which are matters of mechanical design.
The trunnions are within the projection of the vertical cylindrical compartment wall and when the gun muzzle is elevated the inner or breech end projects below the top edge of the gunner's compartment and is enclosed thereby.
The gunner is positioned inside the stationary and movable rings and behind the gun, his position being always maintained with respect to the gun by means of a seat mounted on the carriage. The specification states that the gunner may turn or rotate the circular top by the use of his feet on the floor of the compartment.
29. United States patent to McClean No. 749,214 (defendant's exhibit 15) discloses a pedestal type gun mount comprising a carriage having at its base a relatively large annular ring mounted on rollers for turning in a horizontal plane about its central vertical axis, the rollers operating on a circular fixed track for this purpose.
The upper end of the carriage is provided with trunnions for a machine gun. The gun is capable of adjustment both in elevation and train.
30. The British patent to Simms No. 7,387 of 1899 (defendant's exhibit 7), discloses a motor-driven vehicle having mounted thereupon a horizontally rotatable ring or turret which is rotatable with reference to a fixed circular base ring or track. This turret carries at its upper part and slightly positioned above the car body a trunnion means in which a gun is mounted so as to be capable of elevational movement about its trunnions.
A seat for the gunner is positioned in the interior of the turret just behind the gun and is carried by the movable ring. When the gun muzzle is elevated, the rear or breech end is projected below the car body, the breech being at all times enclosed or positioned within the turret.
31. Page 122 and Plate 18 of Ordnance and Gunnery, published 1894 (defendant's exhibits 19 and 19-a), and page 13 and Plate 12 of Modern Gun Mounts in United States Navy, published 1894 (defendant's exhibit 18), contain identical references and drawings of what is known as the "37 Hotchkiss Top Mount."
The "Fighting top" or "Navy top" as known to those skilled in the art comprises a gunner's compartment formed by a circular wall and located on the mast of a warship at a considerable elevation above the deck level. The aforesaid exhibits refer to a gun mount construction for mounting a small gun in such a compartment.
Each of the above-referred to publications discloses a circular gunner's compartment. As shown in the drawing reproduced from defendant's exhibit 18, it has a flat circular track or base ring 80 supported by brackets a short distance below the top edge of the circular wall. A gun carriage or traveler 82 is mounted on rollers for horizontal circular movement on this track. The upper portion of this carriage 82a projects over and around the top of the circular wall of the gunner's compartment and provides a clamping means for the gun carriage in conjunction with a hand wheel 82b.
The gun carriage is constructed with a socket for an upstanding goose-neck member 84 which carries at its top a trunnion mounting 85 in which a machine gun 800 is mounted, the goose-neck member providing for a pivotal or training movement and by means of the trunnion mountings providing for elevational movement of the gun in a vertical plane.
The gun with its trunnions is positioned slightly above the upper edge of the gunner's compartment, the trunnions being within the cylindrical projection of the compartment walls as well as the portion of the gun which extends inwardly therefrom. When the gun is trained upwardly the inner end thereof projects below the top edge of the compartment and is enclosed thereby.
The loosening of the hand clamp 82b permits the gunner to move the gun carriage bodily over the horizontal circular track and at the same time the gun may be adjusted independently both in horizontal train and in vertical elevation.
32. The Voller patent (see finding 27) shows the concept of mounting a gun in either an aeroplane or motor car to be known prior to the effective date of the invention here in issue.
The Myers patent in suit similarly contemplates the mounting of a gun in a compartment or cockpit in a vehicle adapted to travel over the surface of the earth as well as in an aeroplane. (See finding 7.)
33. It would not require more than mechanical ingenuity to apply the gun mounting of the Gruson patent (see finding 28) to the gunner's compartment or cockpit of the aeroplane instead of the compartment of the vehicle with which it is shown, and claims 3 and 10 of the patent in suit, when construed with sufficient breadth and scope to apply to the Scarff mounting of the defendant, are therefore invalid.
34. All the claims in issue, viz, 1 to 4, inclusive, and 10 to 12, inclusive, unless limited to the specific illustrated embodiment of the patent in suit in which the circular track is located in the cockpit or compartment at the bottom thereof and adjacent an opening in the bottom of the cockpit, are invalid in view of the Gruson patent vehicle gun mounting.
35. The Navy 3-A and 3-B gun mounts are similar in mechanical details and elements to the Navy top gun mount (see finding 31) and it would involve but mechanical skill to locate the circular track or a portion of the circular track of the Navy top mount and the associated gun mounting in the cockpit or gunner's compartment of an aeroplane instead of the gunner's compartment of a warship.
All the claims in issue are invalid if construed with sufficient scope to read upon the Navy 3-A and 3-B gun mounts.
36. It has been stipulated in this case that the question of unauthorized use of the invention by the United States be first determined upon full proofs, argument of counsel, and findings of fact, and that evidence as to the number of articles involved, or the extent of use, or the amount of compensation, if any, due plaintiff, be deferred until and if an accounting is directed.
This suit is brought for the alleged infringement of patent No. 1,608,109, issued November 23, 1926, the patent stating that the "invention relates to vehicles, and particularly to that class thereof that are used in warfare." The original application, of which the patent in suit is said to be a division was filed August 23, 1909. Between this date and the time the patent was issued, the alleged invention was withheld from the public.
The original application for a patent was "for improvements in flying machines." One of the objects stated was "to improve the means for supporting and operating a cannon."
The findings show in detail the disclosures made in the original application with reference to the method of mounting a gun or cannon on an aeroplane. The most important feature, as we view it, is that the gun mount is a rotatable carriage provided with wheels running on a track, and with horizontal trunnions, by means of which the gunner is enabled to aim the cannon in all directions within a hemisphere above the frame or body of the machine. Claims 29 to 34 of the original application refer to a combination of a flying machine and a cannon. Claims 29 and 34, which are typical of this group, are as follows:
"29. A flying machine comprising a body having a gunner's compartment provided with an opening to the exterior of the body, a carriage rotatable within said compartment and projecting through said opening, and a cannon mounted on the carriage outside of said body.
"34. A flying machine comprising a body having a gunner's compartment provided with an opening to the exterior of the body, a carriage rotatable within said compartment and projecting through said opening, a cannon mounted on the carriage outside of said body, and a gunner's seat arranged on said carriage."
On December 7, 1909, the Examiner in the Patent Office rejected claims 29 to 34 on the ground that there was no patentable relation between a flying machine and a cannon carried thereby. Thereafter claims 29 to 34 were cancelled by the patentee.
December 1, 1916, the patentee, Myers, filed a divisional application stating as follows:
"This invention relates to vehicles, and particularly to that class thereof that are used in warfare.
"It consists of a gun or cannon that can be turned in any direction on a vehicle.
"It further consists in improved means for supporting and operating the gun or cannon."
Claim 1 as filed read as follows: "A vehicle comprising an elongated box-shaped body with tapering ends, means for driving and steering the vehicle, a turntable in the said body, a carriage mounted on the said table, and a cannon mounted on the said table."
The claim of infringement was based on two types of Government gun mounts. One of these types is known as the Navy 3-A and 3-B mounts. The findings of the commissioner are directly adverse to the plaintiff so far as the Navy 3-A and 3-B mounts are concerned and in this respect we do not understand the findings are seriously controverted by the plaintiff; consequently the Navy mount will not be considered.
The other alleged infringing mount is referred to in the findings as the Scarff gun mount and in the defendant's argument as the Barbette mount. It is exemplified by a Scarff mount upon a DeHavilland-4 aeroplane. A photograph of a Scarff mount on a DeHavilland-4 aeroplane accompanies Finding 15 which, together with Findings 16 and 17, describes in detail the Scarff mount, making reference to numbers on the photograph showing definitely the location of the parts described in the findings and making plain how they are used.
The photograph shows that the Scarff mount has a base ring or circular track rigidly secured on the top surface of the fuselage or body of the aeroplane and spaced outwardly from the edge of a cockpit about two inches. An annular movable ring is concentrically mounted to rotate horizontally on this stationary ring, both of the rings being of greater diameter than the cockpit. There is nothing similar in the Scarff mount to the mechanism in the Myers mount except the two rings which, however, are located very differently. In the Myers mount the rings are located at the base of the cockpit around an opening therein but in the Scarff mount the rings are placed above and outside the cockpit.
Claim 3 does not locate the runway other than by the statement that it is disposed about the cockpit, but the drawings which accompanied the patent and are reproduced in connection with Finding 8, show that the rotating ring is located in the bottom of the cockpit, which is sufficiently large to receive not only the gunner but the gun mounting. The structure disclosed is such that the rings must necessarily be within the cockpit. An opening is provided in the bottom of the cockpit and in the rotating platform, so that if desired the gun muzzle may be depressed and a downward cone of fire may be obtained.
Claims 3 and 10 when not limited to the specific illustrated embodiment of the patent in suit, in which the circular track is located in the bottom of the cockpit and adjacent to an opening therein, would apply to the Scarff mount, but if read broadly enough to cover the Scarff mount, that is — to apply to rings used for the purpose of rotation wherever located — then these claims are invalid because anticipated by the Voller, McClean, and Gruson patents, as hereinafter shown and found by our commissioner.
The findings of our commissioner, if sustained, are sufficient to defeat the plaintiff's claims in all respects. The plaintiff, however, excepts to these findings and asks that a number of changes and additions be made thereto. There are some additions that are asked by plaintiff that are supported by the evidence, but we think they are not material to the issues in the case. Where changes are asked in the findings we agree with the commissioner and think his findings are fully supported by the evidence.
Finding 25 shows that the Voller patent, although issued October 15, 1912, was made on an application filed May 3, 1909, prior to the filing date of the original Myers application. It is directed to the concept of a gun mounted in an aeroplane. Like the gun in the patent in suit, the gun in that patent had a set of trunnions for adjustment in a vertical plane. Provision for horizontal rotation of the trunnion bracket was provided by means of a movable circular ring rotating on ball bearings on the rim of a second fixed circular race or track placed at the top of a conical portion of a fixed base. The gun may therefore be trained horizontally to any desired position and may also be adjusted through a large elevational angle on its trunnions. Although the Voller patent does not disclose the precise location of the gun, it is obvious that in order that it might be operative it must be placed in a cockpit and the gun must be supported by its trunnions somewhat above the top of the cockpit, which is apparently what is intended by the phraseology of claim 4 of the patent in suit, viz. "adapted to carry a gun support slightly above the level of the upper surface of the main body."
We think that the application of this patent shows that the concept of a gun mounted in an aeroplane in the same general manner as the gun in the patent in suit was not new when the application for the Myers patent was made, but it is not necessary to rest the decision in this case upon such a conclusion. At least the Voller patent shows that there was nothing new in the concept of mounting a gun in an aeroplane in such a manner that the line of fire could be adjusted either horizontally or vertically.
The United States patent to Gruson, described in Finding 28, was issued October 2, 1887, and discloses a vehicle having an armored gun with a stationary circular supporting track or platform rigidly positioned at the top of the gunner's compartment just below the top edge. The movable circular portion of the gun carriage rotates on rollers carried by this circular track, and this movable ring portion carries trunnion mountings in which is fixed a gun capable of elevational movement in a vertical plane (see figure 1 of the Gruson patent set out in Finding 28). As said in Finding 33, it would not require more than mechanical ingenuity to apply the gun mounting of the Gruson patent to the gunner's compartment or cockpit of the aeroplane instead of the compartment of the vehicle with which it is shown. It is true that the Gruson patent did not contemplate the placing of the gun carriage in an aeroplane, but as said by the examiner in the Patent Office (Finding 4) there is no patentable relation between a flying machine and a cannon carried thereby.
An important issue in the case is whether claims 3 and 10 are anticipated by the patent to Gruson. It is said that the rotating circular ring 82, which is present both in the Scarff and Myers mounts, is wanting in the Gruson design, and that instead there is a solid armor plate top B, and suspended from this top the gun and gunner's seat. This presents a misleading picture. The gun mount in the Gruson patent is carried by the lower edge or periphery of the shield or top B, which is semispherical; and this edge forms the mechanical equivalent of the circular ring 82 in the Myers mount and rotates in an identical manner, moving upon rollers. In fact the ring is there, but the shield was imposed upon it. It would be perfectly evident to any one skilled or unskilled that if the shield was put above the gunner it would act as a protection. It was equally evident, we think, that the protective shield was not essential for the support and rotation of the gun.
It is specially insisted that the Gruson patent was never intended to be used in an aeroplane and that it is not adapted to such use. We think it is immaterial whether it was intended to be used in an aeroplane, if the aeroplane was later improved and made suitable for its use. At the time the Gruson patent was issued (1887) aeroplanes were in a preliminary stage so far as warfare was concerned. If anyone had a conception of using a plane for combat purposes it had not been made public at that time, but with the advancement in the art of constructing aeroplanes they became capable of carrying guns, and as has already been shown, the Voller patent described a method of mounting a gun in them in such a manner that the direction for firing would be adjustable. The important feature of the Gruson design was in the adaptability of the gun mount. No change was necessary in this respect to make it suitable for use in the newer designs of aeroplanes. The change was in the capacity of the aeroplane itself, so that it became capable of carrying a gun with an adjustable mount; and improvements in carrying capacity were every day being made until at the time of the World War, before the Myers patent was issued, fighting planes carrying a gun were a part of the regular equipment of the armies engaged. The fact that the Gruson structure was not intended to be used in an aeroplane, does not alter our conclusion that the feature of a gun mounted in a compartment and adjustable as to its direction of fire was disclosed by the Gruson patent. Topliff v. Topliff, 145 U.S. 156, 12 S.Ct. 825, 36 L.Ed. 658, cited by plaintiff, we think has no application to the facts in the case at bar.
It is also urged on behalf of plaintiff that if changes were made in this solid cover B the whole plan of the Gruson patent would have to be reorganized. On the contrary we think it would be evident to anyone skilled or unskilled that if the protective cover was entirely omitted except the ring portion at the lower edge thereof, the gun could be operated with perfect freedom without any other changes. The movable ring portion which supports the gun carriage would still remain. It is true the Gruson patent was on a combination which included a protective cover, but we are now discussing whether the essential elements of the Myers patent were disclosed by that of Gruson, and we are of the opinion that they were. That the ring in the Gruson patent was on the lower part of the protective shield and united with it, we think is immaterial to the issues here involved. As stated above it was supported by rollers and rotated in a similar manner to the ring of the Myers patent. If the protective top so obstructed the view of the gunner as to make it of no advantage it could be discarded entirely and still retain the features which made the direction of fire adjustable. If it was thought that the slot in the top did not provide sufficient scope for upward fire this could be enlarged. Both of these features are merely matters of mechanical design capable of modification by any one skilled in the art.
What is said above is sufficient to dispose of the case, but there are some other matters which, if necessary, may be considered as supporting the defense.
We have already shown that there was nothing new in mounting a gun in an aeroplane at the time when plaintiff applied for his patent, and that there was nothing new in providing for an adjustable mount. In further support of this conclusion with reference to an adjustable mount we would call attention to the patent issued to McClean, January 12, 1904. This disclosed a pedestal type gun mount comprising a carriage having at its base a relatively large annular ring mounted on rollers for turning in a horizontal plane about its central vertical axis, the rollers operating on a circular fixed track for this purpose. The upper end of the carriage was provided with trunnions which supported a machine gun capable of adjustment both horizontally and vertically through the means above stated. The application seems to assume that there was nothing new in mounting a gun so its direction would be adjustable both horizontally and vertically and presented a complicated system of loading and firing upon which the inventor rests his claims to a patent. The vertical adjustment is regulated and controlled by complicated contrivances not necessary to set out here. It is sufficient to say that the gun swings vertically on its trunnions under an elaborate system for controlling and fixing its movements. It will be observed that the annular ring upon which the carriage rotates horizontally is located at the base of the carriage as it was in the plaintiff's patent.
The McClean patent in our opinion furnishes another instance of anticipation of the concept of providing a means for horizontal rotation through the use of a movable ring supported by rollers carried on a stationary ring below.
Our conclusion is that if the patent in suit is read so as to apply to the Scarff mount it was anticipated by prior patents and designs and is therefore invalid. If not so read and confined to the specific embodiments disclosed in the Myers patent there was no infringement, as the Scarff mount was an altogether different structure from that disclosed by the patent in suit.
It follows that the petition must be dismissed, and it is so ordered.
WHALEY, Chief Justice, and LITTLETON, Judge, concur.
WHITAKER, Judge, took no part in the decision of this case.