Manville Sales Corp. v. Paramount Sys.

Manville Sales Corp. v. Paramount Sys.

Opinion

 [***1589]  [*546]   MICHEL, Circuit Judge

Paramount Systems, Inc. (Paramount), Robert S. Butterworth, and Anthony J. DiSimone appeal the United States District Court for the Eastern District of Pennsylvania's September 7, 1989, judgment awarding Manville Sales Corporation (Manville) damages for infringement of U.S. Patent No. 3,847,333 (the '333 patent).  [*547]  Manville Sales Corp. v. Paramount Sys., Inc., 1989 U.S. Dist. LEXIS 10662, 14 U.S.P.Q.2D (BNA) 1291 (E.D. Pa. 1989). Appellants contend that the district court erred in holding that the '333 patent was not invalid because the court erroneously concluded [**2]  that the invention was not on sale nor in public use prior to the section 102(b) bar date, February 5, 1972. Appellants also appeal the district court's order denying their Motion to Alter or Amend the Judgment, asserting that because of 28 U.S.C. § 1498(a) (1988) the district court lacked subject matter jurisdiction to award damages for infringing sales that, it alleges, were made for or sold to the U.S. government. Manville Sales Corp. v. Paramount Sys., Inc., 1989 U.S. Dist. LEXIS 14842, 14 U.S.P.Q.2D (BNA) 1299, 1301 (E.D. Pa. 1989). Manville cross-appeals, challenging the amount of damages awarded. We affirm all appealed issues except we reverse as to personal liability of individual defendants.

BACKGROUND

In early 1971, a Manville division was awarded a subcontract to supply the luminaire assembly for a 150-foot tall, three-foot diameter lighting pole to be installed in the Fort Steele Rest Area along a highway near Rawlins, Wyoming. The assembly was installed, but failed in September, 1971.

Later that same month, Manville's research manager, Robert Zeller, conceived of a new self-centering luminaire assembly design capable [**3]  of travelling readily up and down a pole, thereby providing reliable accessibility for maintenance to the luminaires. The invention had "iris" guide arms, whereas the prior art device installed in Wyoming had vertical guide arms. (See Figure 1.) The guide arms are intended to apply forces between the light pole and the luminaire support such that the assembly maintains a centered position while travelling up and down the pole. Otherwise, the luminaire assembly can get stuck high up on the pole. By late October, Zeller had constructed a working model of the new design and had installed it on a test pole at Manville's R&D center in Ohio. [App. at 519-21.]

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