APPEAL FROM THE CIRCUIT COURT FOR BALTIMORE CITY, JOSEPH H. H. KAPLAN, JUDGE.
Moylan, Lowe and Garrity, JJ.
This appeal is the result of two cases and counterclaims which had been consolidated from the old Circuit Court and the Superior Court of Baltimore City. To understand better the unnecessarily complicated scenario we should point out that most of the controversy arose as a result of the fertile inventive mind of the now deceased Doctor William B. McLean, whose interests here are being represented by a trust which we will collectively refer to as "McLean". Walter Finch, the other appellant, is an attorney who, as some compensation for representing McLean, obtained an one-half interest in the patent which is at the heart of the controversy.
Dr. McLean had patented a space satellite -- oriented invention to which the United States had a nonexclusive royalty-free license by reason of McLean's employment. Both he and Finch thought that such relationship had relinquished to the government complete use and control of the patent in the United States. When Hughes Aircraft Company became interested in the patent in 1967, it informed McLean and Finch of their retained rights, and negotiated a
license agreement for the patent for $10,000; however, McLean and Finch would not only be entitled to certain royalties therefrom but Hughes was to obtain a costly reissuance of the patent and pay the costs of any infringement actions.
The corporate assets of Hughes apparently were needed to explore the potential of the invention, but as Poor Richard commented in his Almanac, "[n]ecessity never made a good bargain." Three years later, having received minimal returns from this license, Finch approached Hughes to discuss a sale of the reissue rights of the patent and negotiated a price of $25,000 over Hughes' $100,000 offer by amending the License Agreement in August of 1970.
Dr. McLean died six years later, after which Mr. Finch and the McLean trustees contemplated the bargain which had been consummated of necessity in 1967, giving birth to the sale in 1970, and decided that "they" had been fraudulently seduced.
As a result they sued Hughes in equity seeking a rescission of the two contracts on the ground of fraudulent inducement and at law for damages on the same ground plus an allegation of breach of those "fraudulently induced" contracts. Finch, however, had also represented Hughes during part of that time in the reissuance of the patent and in patenting the invention in West Germany. He admittedly had overcharged Hughes for those services. This overcharge was the subject of the counterclaim, a judgment to which Finch consented except for the punitive damages added by the court.
The cases were consolidated and specially assigned to Judge Joseph H.H. Kaplan who found for Hughes on all counts including compensatory and punitive damages against Finch. The appeal therefrom raises a multitude of issues, but none of which the judge had failed to address in a meticulously crafted "Memorandum Opinion". In reviewing those issues we have carefully considered the arguments and patiently perused the 20 volumes of record extracts. We
concur in every aspect of Judge Kaplan's opinion. While we may have shortened it and even rephrased it to avoid too obvious an appearance of judicial plagiarism, we could not have improved it by denying Judge Kaplan the credit he deserves for such careful deliberation and such an articulate explanation of his conclusions. We will therefore adopt them as our own, and having edited his opinion only in minimal detail append it herewith. For the reasons he explains we will affirm his judgment.
JUDGMENT AFFIRMED. COSTS TO BE PAID BY APPELLANTS.
Plaintiffs filed a Bill of Complaint in the Circuit Court of Baltimore City on April 27, 1978, against Hughes Aircraft Company seeking rescission of a License Agreement dated March 1, 1967 and an Amendment to that Agreement dated August 1, 1967*fn1 and an accounting. Plaintiffs allege that Defendant procured these contracts by making fraudulent misrepresentations and by purposefully concealing material facts with the intent to deceive and mislead Plaintiffs and to induce them to enter into these contracts.
In its Answer, Defendant denies Plaintiffs' allegations of fraud and raises the defenses of limitations and laches. Defendant also avers that one of the plaintiffs, Walter G. Finch, Esquire, is not entitled to relief in a court of equity because he comes to the court with unclean hands. Defendant alleges that Mr. Finch, an attorney, represented Defendant in the application for the reissue patent which is the subject of the License Agreement and Amendment and in efforts to obtain patent coverage in certain foreign countries. Defendant alleges that during the course of this representation, Mr. Finch submitted bills to Defendant for professional services rendered by Mr. Finch which were falsely inflated, in that they overstated the amount of time
spent by Mr. Finch in rendering services to Defendant. Defendant alleges that these bills were fraudulently prepared at the direction of Mr. Finch with the intent to deceive and mislead Defendant.
Allegations of fraud in connection with Mr. Finch's billing to Defendant for professional services are also the basis for Defendant's Counterclaim against Mr. Finch filed on May 31, 1978. Mr. Finch filed a Motion to Dismiss the Counterclaim, which he later withdrew. At trial, on January 28, 1982, Mr. Finch, by his attorney, consented on the record to the entry of judgment against him on this Counterclaim in the amount of $23,077.27. T. 2138.
Plaintiffs filed a Declaration in the Superior Court of Baltimore City on January 14, 1980, against Hughes Aircraft Company. In their first count, Plaintiffs claim one billion dollars in compensatory and punitive damages for Defendant's alleged fraud in connection with the procurement of the License Agreement and Amendment. In their second count, Plaintiffs claim two hundred million dollars for Defendant's alleged breach of the two contracts between the parties.
Defendant filed general issue pleas, a special plea of limitations and a Counterclaim containing the same allegations as the Counterclaim filed in the Circuit Court case. In its Counterclaim, Defendant claims compensatory damages of $50,000.00 and punitive damages of $200,000.00. Plaintiffs have responded to the Counterclaim by motion raising the defense of lack of legal capacity to sue on the part of the Counter-Plaintiff.
These cases were tried concurrently in January, 1982, and the parties submitted proposed findings of fact and conclusions of law in March, 1982. The Court heard argument of counsel on March 26, 1982.
Walter G. Finch, Esquire, one of the plaintiffs, has been engaged in the private practice of law in Baltimore City
since 1957. Mr. Finch holds Bachelor's and Master's Degrees in engineering (Johns Hopkins University, 1940, 1950), Bachelor's and Master's Degrees in accounting (Temple University, 1949), a Juris Doctor Degree and Master's Degree in patent law (Temple University, 1948; George Washington University, 1949) and a Master's Degree in business administration (Temple University, 1949). He has been a certified public accountant since 1966.
Before he entered private practice, Mr. Finch gained extensive experience in the field of patent law and practice. He joined Westinghouse Electric Company's patent department in 1950 and was employed as a patent drafter. While at Westinghouse, his duties included the making of infringement studies, royalty studies, state of the art studies and preliminary investigations in the United States Patent Office. Near the end of 1951, he took a position with a Washington, D.C. law firm which specialized in patent law. During this period he prosecuted patent applications and conducted various studies in the Patent Office. After approximately one year, Mr. Finch left the Washington, D.C. firm and joined the patent staff of the Applied Physics Laboratory of the Johns Hopkins University. His duties there included the preparation and prosecution of patent applications.
In 1957, Mr. Finch received several contracts to prepare patent applications on missiles for the United States Navy. At about the same time, the son of a deceased Baltimore patent lawyer asked Mr. Finch to take over his father's practice. These events enabled Mr. Finch to enter private practice as a sole practitioner in the area of patent law.
Edith L. McLean, Mark A. McLean and California First Bank, the remaining plaintiffs, are trustees of the McLean 1976 Family Trust under a Deed of Trust from William B. McLean and Edith L. McLean dated March 9, 1976. Included among the assets of this trust at the time it was established was all of Dr. William B. McLean's right, title and
interest in U.S. Patent 3,216,674, one of the patents involved in the instant litigation. Dr. McLean died in August, 1976.
Defendant, Hughes Aircraft Company, is a Delaware corporation with principal corporate offices located in Culver City, California. Hughes began its communication satellite program in the Fall of 1959. In 1970, approximately five percent of Hughes' total business was in the field of communications satellites. Today, communications satellites comprise about ten percent of Hughes' total business.
Dr. McLean was educated at California Institute of Technology and held three degrees in physics from that institution (B.S., 1935; M.S., 1937; Ph.D., 1939). Dr. McLean was employed as a civilian scientist with the United States Navy from 1945 until his retirement in 1974. After heading several departments and divisions of the U.S. Naval Ordnance Test Station, China Lake, California, Dr. McLean was appointed its Technical Director in 1954. In 1967, Dr. McLean left China Lake to become the Technical Director of the Naval Undersea Research and Development Center, San Diego, California. He remained there until he retired in 1974.
Dr. McLean received a number of awards, including the President's Award for Distinguished Federal Civilian Service, for his role in the invention and development of the Sidewinder Guided Missile Weapon System. He was a prolific inventor and held over thirty patents. Dr. McLean maintained a continuing interest in space technology and in the space program throughout his lifetime.
In 1956, Dr. McLean was interested in retaining patent counsel and Mr. Finch was recommended to him. Thereafter, Mr. Finch represented Dr. McLean in connection with a number of Dr. McLean's patents. At some time during the late 1950's or early 1960's, Mr. Finch and Dr. McLean arrived at a fee arrangement: each time that Mr. Finch processed a patent application for Dr. McLean, Dr. McLean would assign to Mr. Finch a one-half interest in the patent
application and subject invention. The costs of prosecuting each application were divided equally between them.
In May, 1965, Dr. McLean assigned to Mr. Finch a one-half interest in the patent application for his invention "proportional navigation system for a spinning body in free space" which ripened into U.S. Patent 3,216,674. In return, Mr. Finch agreed to perform, without further charge, certain professional services for Dr. McLean in connection with the preparation and prosecution of patent applications for the subject invention and to exploit commercially the invention and any patent obtained on the invention. At the time he agreed to exploit commercially U.S. Patent 3,216,674, Mr. Finch understood that he would be negotiating with government agencies and large corporations. If at any time during the course of negotiations, he had felt incapable of or unqualified to conduct these negotiations, he would have sought outside assistance.
In 1967, at the time negotiations commenced between Mr. Finch and Hughes Aircraft Company concerning the grant of a license to Hughes under U.S. Patent 3,216,674, Mr. Finch was an experienced patent attorney and had negotiated license agreements on behalf of Dr. McLean and himself in the past. Hughes Aircraft Company personnel had no reason to believe that Mr. Finch was not completely capable of representing himself and Dr. McLean during negotiations with Hughes. Mr. Finch understood, before he commenced negotiations with Hughes, that he and Dr. McLean were going to be dealing in arm's length negotiations with Hughes.
Dr. McLean and Mr. Finch maintained a close working relationship with respect to all matters involving the patents which are the subject of this litigation and with respect to Mr. Finch's negotiations with Hughes Aircraft Company. Dr. McLean never indicated to his wife, Edith McLean, his son, Mark McLean, his secretary, Thelma Flowers, or his friend, Willis Forman, that he felt that he had been misled by, taken advantage of by, defrauded by or in any way dealt
with unfairly by Hughes Aircraft Company or any of its officers or employees. The instant litigation was instituted by Mr. Finch after Dr. McLean's death.
Research and development in the area of communications satellites by private industry and the United States accelerated after the Soviet Union launched Sputnik in October, 1957. At that time Dr. McLean, then Technical Director of the U.S. Naval Ordnance Test Station at China Lake, began to develop the invention which became the subject of U.S. Patent 3,216,674 (this invention is hereinafter referred to as the McLean invention). Dr. McLean's goal was the development of a device able to track, intercept and destroy satellites in orbit in the same way that an air rocket was able to intercept aircraft in flight.
In 1959, the U.S. Navy filed a patent application in Dr. McLean's name. On November 9, 1965, U.S. Patent 3,216,674 (hereinafter also referred to as the McLean Patent) was issued to Dr. McLean and Mr. Finch. The United States was granted a royalty-free, non-exclusive license under the McLean Patent.
The nineteen claims of the McLean Patent were limited to the field of self-contained proportional navigation apparatus for following a collision course to a target body. In other words, the McLean Patent was limited to a target-seeking space vehicle incapable of being controlled from the ground. None of Hughes' satellites came within the scope of any of the claims of the McLean Patent.
In March, 1967, Dr. McLean and Mr. Finch granted to Hughes Aircraft Company a license under the McLean Patent. The License Agreement was amended in August, 1970. In May, 1970, after surrender of the original, the McLean Patent was reissued as Reissue Patent 26,887 (hereinafter also referred to as the McLean Reissue).
The launching of Sputnik spurred Hughes Aircraft Company's research and development efforts in the area of communications satellites. Scientists at Hughes concentrated their efforts on the commercial development of a synchronous communications satellite. One of Hughes' scientists, Donald Williams, invented a method for positioning a satellite in a synchronous orbit and for controlling and altering the velocity and orientation of the satellite once it had achieved orbit. Mr. Williams was not aware of the McLean invention at the time he invented his system for attitude and velocity control.
In April, 1960, Mr. Williams filed an application for a patent on his invention (hereinafter referred to as the Williams invention), which was replaced in August, 1964, by a continuation-in-part application (hereinafter collectively referred to as the Williams application).
In 1965, claims 8, 9, 11, 12 and 14 in the Williams patent application were allowed. By Office Action dated January 10, 1966, the allowance of claims 8, 9, 11, 12 and 14 was withdrawn. Among the reasons given for disallowance was that certain of the claims were unpatentable because the combination of disclosures in the McLean Patent and another patent, not otherwise relevant to the issues herein, would render certain features of the Williams invention obvious to one of ordinary skill in the art.
The Williams system for satellite control involved the phenomenon of precession and its use in control of the attitude and velocity of a spinning satellite. Attitude and velocity control was to be achieved through the discharge of gas from pulsed jets located on the periphery of the satellite. The timing and duration of these pulses were to be controlled by radio signals sent from an earth station to the satellite.
Although Mr. Williams "independently conceived the idea of precessing the spin axis of a spinning body into a desired orientation by pulsing a gas jet mounted on the body's
periphery, he was not the first inventor of that concept." Plaintiffs' Exhibit 441 at 39. The McLean Patent disclosed that Dr. McLean was the first to conceive this technique.
Noel Hammond was a patent agent employed in Hughes' patent department. Mr. Hammond was one of the persons engaged in prosecuting the Williams application. After receipt of the Office Action dated January 10, 1966, disallowing all claims, Mr. Hammond received and reviewed a copy of the McLean patent. Mr. Hammond then prepared an amendment to the Williams application and filed the amendment with the Patent Office on April 29, 1966. The proposed amendment to the Williams application replaced the disallowed claims with three newly drafted claims; the coverage of the new claims was limited to a method for external control of the attitude and velocity control system, as from an earth station. By Office Action dated May 4, 1966, the Patent Office notified Hughes that all remaining claims were allowable and that prosecution of the application was closed.
The National Aeronautics and Space Administration (NASA) asserted title to the Williams patent on December 27, 1966. The matter was referred to a Board of Patent Interferences; the Board awarded title to NASA. The Court of Customs and Patent Appeals reversed the Board and awarded title to Hughes. The Williams patent was issued to Hughes on September 11, 1973.
Neither Hughes nor any of its representatives perpetrated any fraud on the Patent Office during the prosecution of any of the patent applications involved in the instant litigation and their conduct was in no way improper.
William E. Schuyler was a patent lawyer retained by Hughes in connection with a title dispute with NASA over a patent which covered an invention by Mr. Williams and Dr. Harold A. Rosen, a scientist employed by Hughes. In mid-1966, while Mr. Schuyler was at Hughes' offices on business
unrelated to the Williams patent, its status was discussed with him. Mr. Schuyler suggested that Hughes obtain rights in the McLean Patent and see if it could be reissued with broader claims. He was the first to suggest this. The reason given by Mr. Schuyler for his suggestion was that the McLean Patent appeared to contain a disclosure that could dominate the field of precession in space.
Mr. Schuyler thought that it would be in Hughes' best interest to obtain rights in the McLean Patent and to reissue it, if possible, because if properly reissued, the patent could have claims which would dominate in the field of satellites and other space vehicles with respect to velocity and attitude control. Therefore, a properly reissued McLean Patent could dominate the Williams system for attitude and velocity control of a spinning satellite except for those features dealing with control of the on-board apparatus from an external control station. These latter features ultimately became the subject of the claims of the Williams patent when it issued in 1973. During this period of time, the Williams system for attitude and velocity control was being used in satellites manufactured by Hughes.
Hughes decided that it would be prudent to attempt to acquire rights in the McLean Patent and to have it reissued. Additional information about the McLean Patent was needed. Mr. Hammond ordered the McLean file wrapper from the U.S. Patent Office and ordered a title report made in order to determine the ownership of rights under the patent. Hughes learned that Mr. Finch and Dr. McLean each owned a one-half interest in the McLean Patent and that the United States held a royalty-free non-exclusive license. In order that the value of potential reissue claims might be assessed, Mr. Hammond was directed to prepare some draft claims.
In 1966, Dr. Allen E. Puckett was a senior executive at Hughes Aircraft Company. Dr. Puckett was acquainted
with Dr. McLean; their relationship was based on professional rather than social contacts. They first met in the mid-1950's at a professional society meeting or similar gathering. Both men served on an advisory committee to the Department of Defense's United States Mutual Weapons Development Program. Dr. Puckett became a member in the mid-1950's. The committee had about fifteen members and met irregularly over about a five year period. Dr. McLean and Dr. Puckett were present together at about four or five of these meetings over the five year period. Dr. McLean and Dr. Puckett both traveled with the committee on at least one trip to Europe of one to two weeks duration. Outside of these committee meetings, Dr. Puckett and Dr. McLean did not see each other except occasionally at professional society meetings. Sometime during the late 1950's, Dr. Puckett was at China Lake on business and saw Dr. McLean. A group of about fifteen people, including Dr. Puckett, lunched at Dr. McLean's house. Other than a chance encounter at a professional meeting, perhaps once or twice a year, there was no other contact between Dr. McLean and Dr. Puckett until 1966 when Dr. Puckett contacted him concerning Hughes' desire to acquire rights in the McLean Patent.
Dr. McLean and Dr. Puckett each held the other in high regard and their relationship was friendly. Since Dr. Puckett knew Dr. McLean, he agreed to contact Dr. McLean and open the door to negotiations for the acquisition by Hughes of rights in the McLean Patent. In October, 1966, Dr. Puckett telephoned Dr. McLean in order to ascertain whether Dr. McLean was interested in pursuing the matter of Hughes acquiring rights in the McLean Patent. If Dr. McLean were interested, Dr. Puckett intended to try to arrange a meeting between Hughes' patent people and Dr. McLean or whomever he might designate. Dr. Puckett does not recall the details of that conversation. The only contemporaneous account of that conversation is that contained in a letter written by Dr. McLean to Mr. Finch shortly after the October, 1966, telephone conversation between Dr. Puckett
and Dr. McLean. Plaintiffs' Exhibit 26. That letter does not purport to recount the actual words used by Dr. Puckett.
Dr. Puckett has testified that Dr. McLean's account of the call was more or less accurate, but Dr. Puckett does not believe that he used the words "studying all patents". Since Dr. Puckett cannot recall what was said, and Dr. McLean's letter did not purport to reproduce the exact words used by Dr. Puckett, the Court has before it no evidence from which it can make any findings as to exactly what Dr. Puckett said to Dr. McLean. The Court will not rely on Dr. McLean's letter because the Court has no way of determining whether or not the letter accurately reflects the conversation between Dr. Puckett and Dr. McLean nor whether it was intended to do so. Dr. McLean testified during a deposition in 1975 that his "memory of the conversation with Puckett was that he simply stated that Hughes was interested in the patent which I had at that time, and suggested that we set up a meeting to discuss it." Defendant's Exhibit 738 (marked Defendant's Exhibit 693) at 126. The Court finds that the substance of what Dr. Puckett said was that Hughes was interested in patents in the field of communications satellites, that Dr. McLean owned a patent which might relate to the control mechanism of a satellite and that Hughes was interested in negotiating for rights under the patent. Whatever the exact words used by Dr. Puckett may have been, he was simply trying to convey to Dr. McLean the fact that Dr. McLean had a patent that was of interest to Hughes and that Dr. Puckett thought it would be worthwhile for Hughes' people to talk to whomever Dr. McLean might designate.
Dr. Puckett did not intentionally withhold information from Dr. McLean during this telephone conversation in order to deceive Mr. Finch and Dr. McLean or to induce them to enter into a contract. Dr. Puckett made no statements during this conversation with the intent to deceive Mr. Finch and Dr. McLean or to induce them to enter into a contract. Dr. Puckett's telephone call to Dr. McLean was not part of any plan of Hughes Aircraft Company to defraud
or take advantage of Mr. Finch and Dr. McLean. There was never, at any time, any plan at Hughes, or involving Hughes' officers, employees, agents or representatives, designed to defraud, mislead, deceive, cheat or otherwise take advantage of, or treat unfairly, Mr. Finch or Dr. McLean. Hughes intended to, and did, deal with Mr. Finch and Dr. McLean fairly and at arm's length.
After his telephone conversation with Dr. Puckett, Dr. McLean wrote to Mr. Finch in an undated letter advising him of Dr. Puckett's call and of Hughes' interest in their patent relating to the control mechanism for a satellite. He suggested that Mr. Finch inform Dr. Puckett of the status of their rights in the patent. After a review of his records, Mr. Finch erroneously concluded that all rights in the McLean Patent had been assigned to the United States. In a letter dated October 6,*fn2 1966, he informed Dr. McLean that it was his understanding that all rights in the U.S. patent had been assigned to the government. Dr. McLean forwarded Mr. Finch's letter to Dr. Puckett on November 2, 1966, with a cover letter stating that it appeared that all rights in the U.S. patent had been assigned to the government.
After he received the two letters, Dr. Puckett passed the information to Hughes' patent department to pursue in whatever way they thought advisable. Upon receiving copies of the two letters, James K. Haskell, Director of Hughes' Patent and Licensing Department, asked counsel in Washington, D.C., to examine the Patent Office files and determine the extent of the government's rights. Counsel reported to Mr. Haskell that the Patent Office files showed that the government had only a non-exclusive, royalty-free license.
A meeting, the subject of which was space patents, was held at Hughes Aircraft Company on February 6, 1967. Among the eight topics on the agenda was "Plans for purchase of McLean Patent." Plaintiffs' Exhibit 9. With
respect to the McLean Patent, the consensus of the meeting was that Hughes should acquire rights in the McLean Patent and file an application for a reissue patent.
Either at this meeting or shortly thereafter, Hughes decided to seek a license under the McLean Patent rather than a purchase of the patent. As licensors, Mr. Finch and Dr. McLean would have incentive to cooperate in infringement actions and in the reissue process because they would retain a financial interest in the patent. Additionally, Hughes was not certain of the value of the McLean Patent.
On February 7, 1967, Dr. Puckett telephoned Dr. McLean about the McLean Patent. Dr. McLean suggested that Dr. Puckett contact Mr. Finch. After talking to Dr. McLean, Dr. Puckett wrote a letter to Mr. Finch dated February 7, 1967; he informed Mr. Finch that Hughes' staff had received the impression from a review of Patent Office files that Mr. Finch and Dr. McLean still retained some rights in the McLean Patent. In an attempt to be diplomatic, Dr. Puckett stated that he recognized that agreements not of record might exist and suggested that a meeting between members of Hughes' patent staff and Mr. Finch might aid in establishing the status of rights in the McLean Patent. Dr. Puckett stated that several members of Hughes' patent department would be in Washington the following week and would be calling to arrange an appointment with Mr. Finch.
The letter of February 7, 1967, was not intended by Dr. Puckett to mislead or deceive Mr. Finch and Dr. McLean or to induce them to enter into a contract. The letter was not part of any plan or scheme to take advantage of Mr. Finch and Dr. McLean.
In a telephone conversation on February 9, 1967, and by letter dated February 10, 1967, Mr. Finch advised Dr. Puckett that Mr. Finch and Dr. McLean would be willing to grant to Hughes an exclusive, world-wide license under both U.S. and foreign patents if reasonable terms could be negotiated.
He also stated that "[i]t is believed that this invention may be of interest to German manufacturers", Plaintiffs' Exhibit 33, although no German or other manufacturers had expressed any interest in the McLean Patent or invention. In fact, Mr. Finch's reference to German manufacturers was salesmanship. Mr. Finch was aware that he would be dealing with the Hughes representatives in an arm's length negotiation. Mr. Finch did not expect Dr. Puckett to "make the deal" for Mr. Finch and Dr. McLean. Mr. Finch understood that he would be negotiating for himself and Dr. McLean and that the Hughes representatives would be negotiating on behalf of Hughes. Mr. Finch understood that Hughes would not give up any more than that which he might negotiate from them.
Hughes Aircraft Company was also prepared to enter into arm's length negotiations. A memorandum dated February 10, 1967, set forth Hughes' object in negotiating for rights in the McLean Patent and the rights Hughes wanted to acquire. Also set forth were the terms of an offer of payment for these rights and ways in which the offer could be modified during negotiations. Hughes had had no business dealings or other contact with either Mr. Finch or Dr. McLean before Dr. Puckett telephoned Dr. McLean on February 7, 1967. Neither Mr. Finch nor Dr. McLean gave any Hughes officer, employee, agent or representative any reason to believe that Mr. Finch and Dr. McLean were relying on Hughes or any of its officers, employees, agents or representatives to protect the interests of Mr. Finch and Dr. McLean during the negotiation of the License Agreement. Neither Mr. Finch nor Dr. McLean was relying on Hughes or any of its officers, employees, agents or representatives to protect their interests during the negotiation of the License Agreement.
On February 14, 1967, Mr. Haskell, Paul S. Visher, Associate Manager of Hughes' Space Systems Division, and Mr. Finch met in Mr. Finch's office in Baltimore City. During the meeting, Hughes' representatives told Mr. Finch that Hughes was seeking patent protection in the area of communications
satellites, a field in which Hughes was extensively involved. Mr. Finch was informed that the claims of the original patent had limited value to Hughes as they related to a target-seeking system. Mr. Finch was informed that Hughes was interested in obtaining a license under the McLean Patent provided that Mr. Finch and Dr. McLean would agree to reissue the patent. He was told that the patent had potential value to Hughes if reissued with broader claims. He was told that Hughes believed that "this would be a terrific field in the future" and that this was why Hughes wanted to reissue the patent. Defendant's Exhibit 705 at 286; T. 1050.
The subject of the patent's reissue was explored in some detail. The potential value of the teachings of the McLean Patent and the need for reissue were discussed. Mechanisms for attitude and velocity control then in use by Hughes were discussed in a general fashion. The general area of the difference between a target-seeker, which is what the patent claimed, and claims for attitude and velocity control of a satellite was discussed. Mr. Finch was told that Hughes' satellites used a pulse jet system and were ground controlled.
Hughes representatives spent some time trying to get Mr. Finch to distinguish between a guidance system with a seeker system and a pulse jet control system for a satellite. Mr. Visher recalled,
"We would try to describe the pulse jet system as limited to an attitude control, and he would tend to go back to the seeker system and go back to try to license his products in Europe.
"It was a difficult meeting to try to get him to focus on what the reissue had to be or should be. . . ."
Plaintiffs' Exhibit 272 at 35. Hughes' representatives had difficulty getting Mr. Finch to discuss Hughes interest in the McLean Patent. Mr. Visher recalled,
". . . I was surprised at the degree that Mr. Finch was trying to sell us other patent applications and licenses
which he said had asset values in European missiles or potential European missiles. It was a meeting in which I was surprised at our inability of getting down to issues of this license versus talking about all the other things which Mr. Finch might have that might be of interest to Hughes Aircraft Company."
During the discussion of the differences between a seeker system as claimed by the McLean Patent and the pulse jet system needed for a satellite, Hughes' representatives described how SYNCOM (a Hughes satellite which embodied the Williams system for attitude and velocity control) worked. SYNCOM was described as a "satellite which had both an attitude and a velocity control system working on a pulse jet with reference to its spin cycle." Id. at 38-39. Although Mr. Finch asked for details as to the way in which the claims of the McLean Patent failed to claim all that could be claimed given the disclosures in the patent, Hughes' representatives refused to provide specific information. Mr. Finch later informed Dr. McLean of this fact; despite Hughes' refusal to provide this information, Mr. Finch and Dr. McLean elected to proceed with negotiations with Hughes.
At the meeting on February 14, 1967, there was also some discussion about Hughes' interest in acquiring the right to sublicense others. Mr. Finch was informed that Hughes had other patents and patent applications in the satellite field. Under the proposed license agreement, Mr. Finch and Dr. McLean would receive five percent of all royalties received through licensing arrangements with third parties involving these patents if the McLean Patent or a McLean reissue patent was one of the licensed patents. Mr. Finch and Dr. McLean understood, at that time, that they would receive royalties paid as a result of the license arrangements with third parties only when the McLean Patent was included in the license arrangement. Mr. Finch expressly recognized this fact in a letter to Dr. McLean dated February 14, 1967, and in a letter to Mr. Haskell dated February 7, 1974.
Hughes' later payment to Mr. Finch and Dr. McLean of a percentage of royalties received as the result of a license arrangement with Nippon Electric Company, Ltd. (NEC) was not inconsistent with this interpretation of the contract, as alleged by Plaintiffs, because Hughes granted to NEC rights under all of Hughes' patents; therefore, the McLean Patent was included in the license.
Hughes' representatives at the meeting on February 14, 1967, did not represent to Mr. Finch that Hughes' main interest in the McLean Patent was in sublicensing others and not for its own use, that Hughes had not used or was not using the McLean invention as disclosed in the McLean Patent or that Hughes' satellites did not fall within the scope of potential reissue claims.
Hughes' representatives told Mr. Finch that the McLean Patent had limited value to Hughes as it then existed. It was true that the patent was of limited value to Hughes unless reissued. Its value as "insurance" was minimal. The deadline for filing a reissue application in the Patent Office was in November, 1967. By February, 1967, no one had evidenced the slightest interest in doing so. The Court finds that had it not been for Hughes' initiative, Mr. Finch and Dr. McLean would not have filed a reissue application and that before the suggestion by Hughes that this should be done, Mr. Finch and Dr. McLean had not considered doing so. Indeed, Mr. Finch and Dr. McLean were not even aware that they retained rights in the patent until Dr. Puckett so informed Mr. Finch in February, 1967. Furthermore, Hughes was not manufacturing and had no plans to manufacture equipment falling within the scope of the nineteen claims of the McLean Patent.
Hughes' representatives at the meeting on February 14, 1967, did not make any statements with the intent to deceive or mislead Mr. Finch and Dr. McLean or to induce them to enter into a contract. Messrs. Haskell and Visher did not suppress or conceal any information from Mr. Finch with the intent to deceive or mislead Mr. Finch and Dr. McLean or to
induce them to enter into a contract. Messrs. Haskell and Visher had received no instructions to suppress or conceal information.
During this meeting, Mr. Finch suggested that Hughes engage his services as patent counsel in connection with the reissue application. Mr. Finch recalled,
"I told them, since they are going to use McLean's services and reissue this, that they consider using my services because I was perhaps the most familiar with this patent application to advise them on the thing, on the preparation and filing of the reissue application. They had to have the information from someone, and who was in a better position to give it to them than myself. After all, lawyers are always looking for business."
Defendant's Exhibit 705 at 281. Hughes agreed to retain Mr. Finch's services in connection with the reissue application; he began to render services to Hughes in mid-April, 1967. Hughes retained Mr. Finch's services on the advice of its patent department. They believed that since Mr. Finch had been associated with the original patent that his services might be helpful. Mr. Finch's location near Washington, D.C., was also a factor. Finally, Hughes' patent people believed that this would be "a way of keeping his interest in the activity." Plaintiffs' Exhibit 260 at 134. Since Mr. Finch and Dr. McLean had to be parties to any reissue application and their cooperation was necessary, the Hughes people believed that it would be a good idea if Mr. Finch and Dr. McLean were actively associated with the prosecution of the reissue application. Hughes' retention of Mr. Finch's services was not part of any plan or scheme to defraud, deceive or to otherwise take advantage of Dr. McLean and Mr. Finch.
During the meeting on February 14, 1967, Messrs. Visher and Haskell gave Mr. Finch a copy of a proposed license agreement. Mr. Finch read the agreement and then discussed its terms with Hughes' representatives. Neither of Hughes' representatives made any statements or promises which were inconsistent with the terms of the proposed
license agreement. After reading the proposed agreement, Mr. Finch told Messrs. Visher and Haskell that he desired certain changes in its terms: first, a change in the provision for a $5,000.00 advance against future royalties -- Mr. Finch proposed a $10,000.00 lump sum payment which would not be an advance -- and secondly, a right in Mr. Finch and Dr. McLean to terminate the agreement in the event Hughes paid less than a certain amount in royalties in any year.
Negotiations continued after the meeting. On February 23, 1967, Mr. Finch and Dr. Puckett had a telephone conversation during which they discussed the proposals made by Mr. Finch at the meeting on February 14. These proposals were accepted by Hughes and incorporated into a second proposed license agreement. Mr. Finch did not sign the second proposed license agreement but sent it to Dr. McLean with a letter dated March 6, 1967, suggesting that Dr. McLean call Dr. Puckett and inquire whether Hughes would pay Mr. Finch and Dr. McLean royalties if Hughes used the McLean invention for its own purposes. Mr. Finch made this suggestion because he realized that Hughes' satellites might come within the scope of the claims of a reissued McLean Patent. Hughes agreed to pay royalties to Mr. Finch and Dr. McLean if it used the invention claimed in the McLean Patent and any reissue of the patent. On March 28, 1967, Mr. Haskell wrote a letter to Mr. Finch enclosing a revised license agreement signed by Dr. Puckett and a check for $10,000.00.
On April 3, 1967, Mr. Finch met with Dr. McLean in Washington, D.C. They reviewed and discussed the License Agreement and concluded that it was reasonable. Dr. McLean signed it at that time; Mr. Finch signed it upon his return to Baltimore.
Plaintiffs have presented no expert testimony or evidence that the royalty provisions of the License Agreement were unreasonable, and the Court cannot conclude that they were
unfair to Mr. Finch and Dr. McLean.*fn* Apparently, with the benefit of hindsight, Mr. Finch believes that he made a bad deal. However, at the time the License Agreement was executed, both Mr. Finch, an experienced patent attorney, and Dr. McLean believed that they had negotiated a reasonable royalty. Hughes personnel had no reason to believe that the royalty provisions were unfair to Dr. McLean and Mr. Finch: Hughes had agreed to pay all costs and expenses of any reissue and any infringement suits, it had agreed to pay a non-refundable sum of $10,000.00 to Mr. Finch and Dr. McLean (this was not an advance and could not be recovered by Hughes even if no royalties were received from third parties), Hughes did not know whether it would be able to obtain a reissue of the patent and the scope of any allowed reissue claims was uncertain. Hughes was uncertain as to the value of the McLean Patent at that time.
The License Agreement was fairly negotiated at arm's length. Nothing in the License Agreement was false or misleading. Hughes did not draft any part of the License Agreement with the intention to deceive or mislead Mr.
Finch and Dr. McLean or to induce them to enter into a contract.
In early April, 1967, Mr. Haskell sent a draft of proposed reissue claims to Mr. Finch. Upon receiving these claims, Mr. Finch reviewed them and had them reviewed by a patent engineer for technical accuracy. Near the end of the month, Mr. Finch met with Dr. McLean in Washington, D.C., and the two reviewed the proposed reissue claims in preparation for a meeting to be held in May at Hughes' offices in Los Angeles, California.
On May 1, 1967, Mr. Finch and Dr. McLean attended a meeting at Hughes' offices in Los Angeles. A number of Hughes' top executives were present. The purpose of the meeting was to review the proposed reissue claims, to revise them and draft additional claims, if necessary, and to make sure that Hughes had the information necessary to prepare a reissue application.
During the meeting, the proposed claims were discussed, one at a time. Both Mr. Finch and Dr. McLean participated in the discussion and each suggested changes in the proposed claims. Mr. Finch and Dr. McLean also provided Hughes with information to be used in the declaration to be filed with the reissue application and in the application. ...