222 Ct. Cl. 570 | Ct. Cl. | 1980
Patents; remand to Trial Division of complicated cross-motions for summary judgment; laches; estoppel against Government for earlier failure to claim ownership of invention. — On January 25, 1980 the court entered the following order:
The parties’ cross-motions for summary judgment are supported by 263 pages of briefs and many more pages of voluminous exhibits. A mass of issues and sub-issues is raised,
(a). Does the Government have title to the invention covered by the '883 patent because it was first reduced to practice in the performance of a government contract? This overriding issue implicates the following major issues:
(b). Was the invention first reduced to practice, prior to the government contracts on which defendant relies, by plaintiffs testing of the unassembled components plus proof, by computer verification or simulation, that the system as a whole would operate as expected?
(c). In any event was the invention embodied in the '883 patent excluded from coverage under the "subject invention” clauses of the government contracts by certain other clauses of those contracts?
(d). Is defendant precluded by the doctrine of laches from now asserting its title to the invention covered by the '883 patent?
(e). Is defendant equitably estopped by its conduct from now asserting its title to the invention covered by the '883 patent?
It is very plain to the court that this is another example of an involved litigation in which it was a mistake to bypass the trial judge entirely and thrust complex and novel
However, on issues "(d)” and "(e)”, supra, we are prepared to rule definitively on the basis of the materials now before us on these motions for summary judgment. With respect to the laches point presented by plaintiff, we hold as a matter of law that defendant is not barred by laches from asserting in this litigation its title to the invention covered by the '883 patent.
The same reasoning sustains rejection of plaintiffs related contention of equitable estoppel. On this aspect of the case McDonnell Douglas emphasizes that it constructed a plant in Titusville, Florida, in the expectation of receiving government procurement contracts for the DRAGON missile. But plaintiff had no legal justification to rely so heavily on its receiving such contracts even if it fully owned the '883 invention and if DRAGON infringed that patent. The Government’s competitive bidding process does not have to take account of a bidder’s ownership of a patent said to be involved in the procurement. See Rel-Reeves, Inc. v. United States, 209 Ct. Cl. 595, 639, 534 F. 2d 274, 298 (1976); Leesona Corp. v. United States, 220 Ct. Cl. 234, 599 F. 2d 958, 970 (1979), cert. denied, 444 U.S. 991 (1979); 38 Comp. Gen. 276, 278 (1958). A bid can be awarded to another bidder, leaving the patent-owner to sue under 28 U.S.C. § 1498.
Accordingly, It is Ordered that
(a) Plaintiffs motion for partial summary judgment is denied with prejudice as to the contentions that defendant is barred by laches or equitable estoppel, or both, from claiming ownership of the invention embodied in the '883 patent;
(c) if the trial judge is of the view that any of the issues thus referred to him call for further factual ventilation or further briefing, he is authorized in his full discretion to order such further briefing and/or a trial on such issues; and
(d) to the extent a trial is held, the motions for summary judgment shall be deemed denied without prejudice and further procedure in the case shall be governed by chapter XI of the Rules.
The motions do not, however, cover the questions of patent validity or of infringement.
Plaintiffs laches and equitable estoppel points both assume arguendo that the special contract provisions, on which plaintiff relies, did not exclude that invention from the "subject invention” clauses of the government contracts.