U.S. Court of Appeals, Federal Circuit
January 20, 1999
CHARLES E. PFUND, PLAINTIFF-APPELLANT,
UNITED STATES, DEFENDANT-APPELLEE.
Before Plager, Clevenger, and Rader, Circuit Judges.
The opinion of the court was delivered by: Per Curiam.
Plaintiff-appellant Charles E. Pfund filed actions in the United States Court of Federal Claims, pursuant to 28 U.S.C. § 1498(a), alleging that various devices manufactured by or for the United States infringe Pfund's U.S. Patent Nos. 4,279,036 (the `036 patent), 4,664,518 (the `518 patent), and 4,764,982 (the `982 patent). The Court of Federal Claims held that the twenty-two claims in suit are invalid as obvious under 35 U.S.C. § 103. Pfund v. United States, 40 Fed. Cl. 313 (Fed. Cl. 1998). We find no reversible error in the exemplary decision of the Court of Federal Claims, and therefore affirm.
The three patents in suit cover variations on satellite-based communication using lasers. According to the `036 specification, *fn1 * a mobile earth vehicle such as a submarine establishes a communications link with a satellite using laser signals. A second vehicle or station, such as a ground command station, establishes a communications link with the satellite using radio communications. The mobile vehicle and ground command station can communicate with one another via the satellite. Because the mobile vehicle transmits only laser signals rather than radio signals, its transmissions cannot be jammed and do not give away its location, thus facilitating covert operations. Claim 14 of the `518 patent is illustrative:
"A satellite communication relay station comprising: an orbiting earth satellite; a radio relay on board said satellite operable to transmit and receive messages between said satellite and a ground station; laser transmission means on board said satellite including means for modulating a transmitted laser beam with a message received via said radio relay and means for directing said modulated laser beam toward a remote station; laser receiving means on board said satellite for receiving a laser beam from said remote station and demodulating received laser energy to recover message content thereof; and means for modulating the message content obtained from a received laser beam onto the transmitter of said radio relay to transmit said message content to said ground station."
Pfund filed the application that resulted in the `036 patent on July 2, 1962. At trial, he established a conception date of May 7, 1962. Id. at 335-36. The `036 patent issued nearly twenty years later, on July 14, 1981, and the divisionals issued thereafter. The twenty-year delay was due to a secrecy order on the patent application, interference proceedings, and other administrative delays.
Pfund asserted claims against thirteen different devices. The Court of Federal Claims held that one or more claims read on each of the accused devices, but that all of the claims in suit are invalid. Pfund appeals.
We review a legal Conclusion of obviousness as a matter of law, de novo. See Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1578, 42 USPQ2d 1378 (Fed. Cir. 1998). The Conclusion, however, requires underlying factual findings such as the scope and content of the prior art, the level of skill in the art, and the merit of secondary factors, which this court examines for clear error. See id.; Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S. Ct. 684, 15 L.Ed.2d 545 (1966).
In its well-reasoned opinion, the Court of Federal Claims cites as a primary reference a 442-page technical report authored by Duane E. Erway and others at Electro-Optical Systems, Inc. (the EO Report). The EO Report describes a communi-cations system including nearly all of the elements of each of the claims in suit; it is different from the claimed invention in that the preferred signal source is sunlight, rather than a laser. In addition to the EO Report, the Court of Federal Claims found that there was a rich body of literature describing laser-based satellite communication prior to Pfund's invention. Specifically, the Court of Federal Claims reviewed six other prior art references (the GPL, Dulberger, Luck, Holahan, Otten, and Jacobs references), none of which were before the Patent and Trademark Office during prosecution of the `036 patent. One or more of these references, combined with the EO Report, teaches all of the elements of each of the claims in suit.
Pfund argues that there is no motivation to combine these references or to substitute elements in the EO Report. As the Court of Federal Claims found, however, the record is replete with evidence of such motivation. For example, the EO Report itself states on page 5-30 that it is sometimes desirable to use lasers as a signal source in optical communications systems. The Dulberger reference also teaches the desirability of using lasers in high-security communications links, and it cites the EO Report as a reference. And, as the Court of Federal Claims found, the combination of all of the above references indicates that the potential for using lasers in a communications system was within the knowledge of one of ordinary skill in the art at the time of the invention. Pfund v. United States, 40 Fed. Cl. at 352-53.
It also was obvious at the time of the invention to combine radio and laser communication capability on a single satellite, as some of the claims require. The Otten reference teaches that radio and optical beams (such as lasers) both carry communications, and that each type of signal has advantages in certain circumstances. Thus, Otten does not teach away from combining radio and laser communication on a satellite, as Pfund asserts. Rather, Otten suggests that combination to one of skill in the art where the situation entails advantages to using one type of signal in one part of the link and using another type of signal in another part of the link. Submarine to ground station communication presents such a situation.
Pfund also asserts that the Court of Federal Claims used hindsight in making its obviousness determination, see, e.g., Monarch Knitting Machinery Corp. v. Sulzer Morat GMBH, 139 F.3d 877, 881, 45 USPQ2d 1977 (Fed. Cir. 1998), and failed to consider the secondary factors of nonobviousness, see, e.g., Heidelberger Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1072, 30 USPQ2d 1377 (Fed.Cir.1994). An examination of the record, however, reveals that the Court of Federal Claims was acutely aware of the dangers of hindsight, and conducted a careful analysis of the teachings of the prior art from the point of view of one of ordinary skill in the art at the time of the invention. For example, the Court of Federal Claims notes, "[i]n analyzing the nonobviousness of any patent claim, it is crucial for the court to resist the temptation to employ hindsight . . . . The key to an invention that significantly advances the field of science or technology often is the ability of the inventor to bring a clarity and perceptivity of thought to a complex technical problem so as . . . to produce what appears to be a simple solution . . . ." Pfund v. United States, 40 Fed. Cl. at 351. The record also shows that the Court of Federal Claims weighed properly in its obviousness analysis the secondary indicia of nonobviousness proffered by Pfund, including evidence of long-felt need and the secrecy order imposed on the application that eventually matured into the `036 patent. Id. at 355-57.
Finally, Pfund asserts that the EO Report is not prior art to the patents in suit under section 102(a) because it was not available to the public at the time of the invention. However, the EO Report's cover is dated September, 1961 and the inside cover states that it "has been released to the Office of Technical Services [OTS] . . . for sale to the general public." Furthermore, an abstract for the EO Report was published in the March 20, 1962 issue of U.S. Government Research Reports, which contains several statements establishing the availability of the full reports (corresponding to the abstracts contained therein) from OTS, prices, and instructions for obtaining them. Finally, the EO Report abstract states that it is a "Rept. for Mar 59-Sep 61." These dates match the starting date of Electro-Optical Systems' research on this project, and the date on the cover of the EO Report, respectively. This evidence supports the Court of Federal Claims' finding that the abstract corresponds to the final version of the EO Report before the court, as opposed to some earlier, less complete version. Thus, the evidence shows that the EO Report was available to the public before Pfund's invention on May 7, 1962.
Pfund raises several other arguments on appeal, but all were considered and decided properly by the Court of Federal Claims. In fact, the Court of Federal Claims' thorough opinion would serve as an excellent model of judicial consideration of patent cases.
Therefore, we affirm.