Williams patent trial enters final phase–Carol Hazard Hughes News Quarterly International Edition January-March 1988 Transcribed by Fatih MacPherson

Hughes is on the home stretch of a complex, lengthy legal dispute spanning two decades over a patent relating to space technology.

The company is seeking $1.2 billion in damages from the U.S. government for use of the Williams patent on more than 100 spacecraft.

The patent was filed by Hughes in 1960 in the name of Donald Williams, a Hughes physicist, whose invention was critical to the development and success of the communications satellites.

The trial, which opened in the Los Angeles area to hear testimony from West Coast witnesses, has moved to the U.S. Court of Claims in Washington, D.C., where proceedings resumed.

Witnesses who have testified on behalf of Hughes include Chairman of the Board Albert Wheelon who, in an unusual court session, gave his testimony in Space and Communications Group’s High Bay, and retired Chairman Albert E. Puckett, who testified in court.

The government has indicated that it plans to put between 90 and 100 people on the witness stand to refute the company’s claims to compensation under the Williams patent.

Hughes has battled to protect its patent rights almost since the time the invention was first used in 1963 on Syncom, the first synchronous satellite.

Crucial issues involving the scope of the patent were resolved in Hughes’ favor in a September 1983 decision by the Court of Appeals for the Federal Circuit after being tangled in a complicated string of legal actions. Validity of the Williams patent, which also was disputed, was affirmed in the same decision.

During the present phase of the proceedings, the question is not whether patent rights were violated, but how much money will be awarded for the infringements.

The courts will determine the number of spacecraft that have infringed, a royalty rate for the use of the invention, and the amount of money to be awarded as delay compensation.

Hughes’ request for $1.2 billion involves a royalty rate of 15 per cent of the cost of each spacecraft based on a precedent set in 1965 in which INTELSAT, the International Telecommunications Satellite Organization, acting through its U.S. agent, COMSAT, agreed to pay Hughes 15 per cent for using the invention on its commercial spacecraft.

The Williams invention made possible a spacecraft whose attitude could be controlled through “precession,” a type of motion achieved by spin-synchronous pulsing of thrusters.

The brilliant Mr. Williams, who died in 1966 at the age of 34, was selected by the U.S. Chamber Commerce as one of the nation’s outstanding young men of 1965 for his invention.

He had worked with Harold Rosen, now a Hughes vice president, and Tom Hudspeth, a Space and Communications Group chief scientist, to build Syncom, the first satellite to provide communications over a portion of the Earth.

During the development stage, when funding of his work on the satellite was jeopardized, Mr. Williams volunteered his life savings to keep the program alive.

Chairman Emeritus L.A. “Pat” Hyland, who then was vice president and general manager remembered the day: “When he put that check down on my desk, I became convinced that this type of dedication just had to be supported.”

Despite leading to systematic coverage of the globe, Syncom was initially met with skepticism and its makers were hard pressed to find a customer. Someone reportedly remarked after a presentation made at the 1961 Paris Air Show that the Eiffel Tower was “as high as it (Syncom) would ever get.”

General mistrust involved doubts about such revolutionary technology as well as concerns about the quality of voice communications from a satellite in as high an orbit as 22,300 miles above Earth, where the satellite would appear stationary above a specific area of the globe.

Hughes persisted, however, and NASA was eventually persuaded to buy and launch Syncom.

The first Syncom, launched in February 1963, exploded before reaching its final orbit. Five months later, however, Syncom II was launched into synchronous orbit, where it heralded a new era in instant communications.

NASA, which had funded the project, requested in 1966 that the U.S. Patent Office issue the Williams patent to NASA instead of Hughes.

NASA claimed that the Williams invention was first reduced to practice during the performance of the NASA Syncom contract, thereby making NASA the owner of the patent.

Hughes countered that Mr. Williams had built a working model prior to the NASA contract and that the invention was, thereby, first reduced to practice in a Hughes laboratory using company funds.

The U.S. Patent Office Board of Patent Interferences sided with NASA, but the adverse 1969 ruling was appealed and, in 1972, the Court of Customs and Patent Appeals agreed with and gave title to Hughes.

The Williams patent was issued to Hughes Sept. 11, 1973. The matter, however, was far from being resolved.

Government satellites built by other companies were using the Williams invention without compensation to Hughes. Hughes consequently sued the government for infringement Nov. 13, 1973.

The practice of suing the government for patent infringement is not uncommon, said Hughes patent attorney Steve Mitchell. As a result of pre-award negotiations with bidders, the government often assumes infringement liability to shield contractors from legal actions by patent owners, he explained.

The Hughes versus the U.S. government case dragged on, as often happens with patent infringement lawsuits and over the years, became snagged in a web of legal actions.

These included a ruling in 1979 that the Williams patent was invalid, which was reversed a year later by the Court of Claims.

In another development in 1982, the patent was declared valid, but limited in that it did not apply to new technology that enabled satellite control commands to be stored in an onboard computer and later executed automatically instead of in real time, as was the case with Syncom. Hughes appealed and the ruling was overturned in 1983.

During the 15 years that the case has been pending, numerous government-procured spacecraft have infringed the patent.

In the meantime, Hughes sued Ford Aerospace and Communications Corporation for using the Williams patent on the commercial Intelsat V series of spacecraft. This case was dismissed last year after Ford agreed to settle out of court. Terms of the settlement were not disclosed.

The trial in process is the final leg of a 21-year legal dispute in which Hughes has not wavered from its original position stated Feb. 3, 1967, when the company began its battle against NASA in the U.S. Patent Office to establish ownership of the Williams invention and the right to be compensated for its use.

 

 

 

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