The Tortuous History of the Williams Patent–Jack Fisher

Don Williams was thought of by many people at Hughes Aircraft as an engineering genius.  He was revered for his role in the design of SYNCOM and his patent that enabled attitude and orbital position control of a spin stabilized satellite.  The patent that Don Williams obtained, assigned to Hughes Aircraft, was the keystone for the development of spin stabilized communications satellites built by Hughes over the 30 years following the patent application on August 21, 1964.  Williams stunned his friends and colleagues at Hughes by taking his own life on February 21, 1966.

Williams was involved with the geostationary satellite design effort from the very beginning in early 1959.  He was very concerned that Hughes Aircraft would retain any patent rights evolving from this design effort.  In November 1959 he traveled to NASA Headquarters in Washington DC to brief NASA executives on the Hughes design activities.  He began his briefing by stating that Hughes wished to retain all patent rights with his discussion of the Hughes design.  NASA personnel agreed to this premise.

By early 1960 Hughes had a satellite design in place that was clearly prototypical for the yet-to-come SYNCOM.  The mission plan utilized the four-stage NASA-developed SCOUT launch vehicle with an Altair solid motor as the spin stabilized unguided fourth stage.  A fifth stage solid rocket added to SCOUT would boost the satellite into a geosynchronous transfer orbit.  The satellite included a solid rocket motor to attain the final geostationary orbit.  The mission plan included launch from the near-equatorial Jarvis Island about 1600 miles south of Hawaii.  

In Reference 1, published in early 1960, Williams describes the mission plan and his control system.  The system consists of a sun sensor with two slits at a 350 angle, used to determine satellite attitude relative to the sun and spin rate, and two jets, one parallel to and one normal to the satellite spin axis, used to precess the spin axis and control orbital velocity.  These features are described a patent application dated April 18, 1960.  Williams determined that jet performance for the selected valves was a thrust of 1.3 pounds and a specific impulse (ISP) of about 60 seconds for a system pressurized with 3000 dry nitrogen.   At this time Williams had tested a lab model that would allow a claim for reduction to practice for his control system.  

With the NASA contract received by Hughes in August 1961 the mission ground rules were modified to utilize a launch from Florida with the Delta launch vehicle.  NASA adopted the name SYNCOM for this mission.  A successful geostationary orbit was achieved with the launch of SYNCOM III on July 26, 1964.

On August 21, 1964 Williams reapplied for a patent on his control system. He states in this application, “This is a continuation in part of my prior co-pending application Ser. No. 22,733, filed Apr. 18, 1960 now abandoned.  In order to disallow any NASA claims of rights to the patent the application describes in detail the satellite and mission as of the 1960 design prior to the NASA contract of August 1961. The application includes the sun sensor and jets of the control system as well as a nutation damper.

In 1966 the U. S. Patent Office allowed Hughes patent claim.  However, NASA requested that the patent be issued to NASA as it was first used on NASA satellite.  The Court of Customs and Appeals ruled Hughes owned the patent and the U. S. Patent 3758051 Velocity Control and Orientation of a Spin Stabilized Body, was granted on September 11, 1973.  The first page of the patent is shown below.

In November 1973 Hughes filed suit in U. S. Court of Claims charging that the government had used the patent without authority and sought compensation.  The first trial in 1976-77 ended when the judge was disqualified.  The next trial in 1979 ruled for NASA. This was appealed and the appeals court ruled that the judge had erred and returned the case to the lower court.  In 1982 the court ruled in Hughes favor but limited royalties only to those satellites that were under control from the ground.  This was appealed by Hughes and in 1983 the Appeals Court ruled that the patent also applied to satellites that controlled by onboard computers.  This expanded the royalties claim to military as well as NASA satellites. 

In February 1988 a trial in the U. S. Court of Claims, under Judge James Turner began to determine royalty payments to Hughes.  To be determined:  what satellites infringed the patent, what are reasonable royalties, and what is the interest on the unpaid royalties going back as far as 1963.  Hughes asks for royalties of 15% for a total of $1.2 billion on 100 satellites.  Early in the trial Judge Turner, court clerks, attorneys, and reporters made a visit to the Hughes high bay in El Segundo.  After donning the obligatory smocks they heard Dr, Albert Wheelon, Hughes CEO, describe in detail the satellite assembly process and the operations required to maintain a satellite in orbit.

During the trial it was revealed that in 1974 Hughes offered licenses for the use of the Williams patent to Philco-Ford, TRW and Messerschmitt-Bolkow-Blohn for 2 to 5% of the satellite cost.  Hughes at the time had filed suit against Philco-Ford for patent infringement. This suit was settled out-of-court with a payment rumored to be $75 million.  This seriously undermined Hughes claim for a 15% royalty.

Patent rights expire in 17 years or September 1990 for the Williams patent.  It was rumored that some government satellite programs might be delayed past this date to avoid any patent royalty liability.  

Judge Turner finally ruled that 81 satellites violated the patent and had a value of $3.6 billion with a royalty rate of 1% or $36 million. Added to this is $118 million for delay compensation for loss of unpaid royalties for a total of $154 million.  The 81 satellites were all government and about 75% were military.

 Hughes appealed the judgment of the United States Court of Federal Claims awarding Hughes compensation based on a 1% royalty rate.  On June 19, 1996 the U. S. Court of Appeals affirmed that a 1% royalty was the court determined that a royalty rate of 1% would be reasonable.

On March 1, 1999 the U. S. Supreme Court denied a government petition to review Judge Turner’s decision for Hughes.  Federal Claims Court entered judgment for Hughes on March 12,1999.  Payment of $154 million was made to Hughes on March 30, 1999.  

Final note: patent royalties are taxable as ordinary income less, of course, litigation expenses.

Note:  I cannot attribute the facts in this paper to any particular source.  All of the references listed below were necessary to establish my understanding of this history.  The only exception is Reference 1 that provides Don Williams description of his system as patented.

References

  1. Dynamic Analysis and Design of the Synchronous Communication Satellite, D. D. Williams. Engineering Division Hughes Aircraft Company TM-649 May 1960.
  2. U S Patent 3758051 Velocity Control and Orientation of a Spin-Stabilized Body Donald D Williams
  3. The Origins of Satellite Communications 1945-1965.  David J. Whalen.  Smithsonian Institution Press, 2002.
  4. NASA Announces Project SYNCOM NASA Press Release No. 61-178 August 11, 1961
  5. SYNCOM Design and Operation NASA Press Release No. 61-223.
  6. The Syncom III Launch NASA TN D-3377 Forest H. Wainscott,  April 1966
  7. Hughes Case Could Send Patent Claims Into Orbit, Evelyn Richards.  The Washington Post August 13, 1989.
  8. Hughes Awarded Judgment in Long Running Case Defense-Aerospace.com source Hughes Electronics March 1999
  9. Patent Case May Cost U. S. Billions Edmund L. Andrews New York Times April 22, 1989.
  10. 10.HAC Receives Basic Patent On Spin-Stabilized Satellites—Hughes News September 14, 1973.
  11. Hughes Aircraft Asks 1$ Billion From U.S. Over Satellite Patent Ralph Vartabedian Los Angeles Times February 3. 1988
  12. Judge in $1.2 Billion Case Sees How Satellite Are Built—Hughes Aircraft Patent Suit Shifts to Plant.  Ralph Vartabedian, Los Angeles Time February 6, 1988.
  13. Legal Blunder May Be Costly to Hughes Aircraft Could Lose $270 Million Claim; Judge In Patent Case Cite Error By Lawyers. Ralph Vartabedian Los Angeles Times February 6, 1988.
  14. U. S, in Last-Ditch Effort to Thwart Suit by Hughes Aerospace:  The Pentagon Allegedly Stole Satellite Technology.  A Judgement of up to $1.2 Billion is Expected in 23-Year Case.  Ralph Vartabedian Los Angeles Times May 23, 1994.
  15. Hughes Wins $114 Million In Patent Case Technology:  It Is the Largest Such Award Ever Against U. S. Government, But It Falls Far Short of the Company’s Expectations.  Ralph Vartabedian, Los Angeles Times June 18, 1994.
  16. Death Ends Work of Satellite Star Donald Williams. Hughes News February 25,1966.
  17. United States Court of Appeals for the Federal Circuit.  Hughes Aircraft Company, Plaintiff-Appellant, v. The United States, Defendant/Cross Appellant June 19, 1996.

2 thoughts on “The Tortuous History of the Williams Patent–Jack Fisher

  1. Thank you! I very much enjoy reading the history of Hughes designs and appreciate you blowing the dust off this one. As a recovering engineer who’s argued to defend a trademark (not a patent, but same ballpark) in court, I know something of the vagaries of the civil justice system.

  2. Thanks for sharing, Jack. I didn;t know some of this. I remember in the late 80’s, Hal Rosen told me that Ford had offered Hughes any of their satellite patents, but he (Hal) said there was nothing worth taking 🙂