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In The United States Court of Federal Claims
No. 00-705C (Filed Under Seal: December 23, 2005) (Filed: January 31, 2006)1 __________ THE BOEING COMPANY, Plaintiff, v. THE UNITED STATES, Defendant. * * * * * * * * * * * Trial; Alleged infringement of patent by NASA in developing super lightweight external tank for Space Shuttle; Claim construction; Phillips; "predetermined underaged strength level"; "less than 300 F"; Validity of patent; Anticipation; Obviousness; Graham factors; Terminal Disclaimer; Infringement; Addition of silver; Temperature; External tank infringes Boeing patent; No license.

_________ OPINION __________ Arthur M. Lieberman, Keith D. Nowak and Richard J. Conway, Dickstein, Shapiro, Morin & Oshinsky, LLP, for plaintiff. Ken B. Barrett, United States Department of Justice, Washington, D.C., with whom was Assistant Attorney General Peter D. Keisler, for defendant. ALLEGRA, Judge: This patent case is before the court following an extensive trial in Washington, D.C. During initial planning, the angle of inclination of the orbit of what would become the International Space Station its orbit relative to the equator was set at 28.5 degrees, to coincide with the latitude of the National Aeronautic and Space Administration (NASA) launch center at Cape Canaveral, Florida. This was designed to give the Space Shuttle maximum momentum (rotational throw) as it left the earth's gravity, thereby maximizing its payload delivery capability for space station missions. In the late 1980s and early 1990s, with the Cold War waning, NASA became increasingly interested in building the station in partnership with the Russian Federal

An unredacted version of this opinion was issued under seal on December 23, 2005. The opinion issued today incorporates the parties' jointly proposed redactions and corrects some minor typographical errors. This redacted material is represented by brackets [ ].

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Space Agency. But, for Russian spacecrafts to reach the station from their launching pads at the Baikonur Cosmodrome in Kazakhstan, the planned inclination of the station's orbit had to be adjusted to 51.6 degrees. This would have significantly reduced the Shuttle's payload delivery capability for station missions from 48,000 pounds to 35,000 pounds which, in turn, would have delayed deployment of the various modules of the massive station. To prevent this, among other things, the external tank of the Shuttle was redesigned to be 7,500 pounds lighter, with this weight savings generating an almost pound-for-pound increase in the Shuttle's payload capability. Much of the weight reduction came from the use of a new aluminum-lithium alloy, Alloy 2195, which was weldable, 30 percent stronger, and five percent less dense than the aluminum alloy previously used in the external tank. But, Alloy 2195, as well as the products fabricated therefrom, resulted from processes that the Boeing Company (Boeing) contends violated certain claims in its U.S. Patent No. 4,840,682 (the `682 patent). In this lawsuit, Boeing seeks compensation from the United States, under 28 U.S.C. 1498(a), for the alleged unlawful use by NASA of this aluminum-lithium alloy in the redesigned external fuel tank of the Space Shuttle. D efendant remonstrates that the relevant

claims of the `682 patent are either invalid due to anticipation and obviousness in light of the prior art, or limited by a terminal disclaimer. It further contends that, even if those claims are valid, there is no infringement here because, inter alia, the content of Alloy 2195 and the process used to age the panels of the external fuel tank are different than what is claimed in the `682 patent. Finally, it asserts NASA had a license to employ the claimed invention.
I. FACT FINDINGS

Based on the record, including the parties' stipulations, the court finds as follows: A. Basic Metallurgy as it Relates to Aluminum

Before plunging into the relationship between the `682 patent and the development and construction of the external fuel tank of the Space Shuttle, it is helpful to begin, as the parties did, with some basic metallurgy concepts, particularly, as they apply to aluminum alloys, and, especially, as to aluminum-lithium alloys. 1. Metallurgy Principles

An alloy is a substance with metallic properties, composed of two or more chemical elements, of which at least one is a metal. The properties of alloys depend upon their structural characteristics, which can be modified by changing the processing of the alloy, the composition thereof, or both. Among the properties that may describe a particular alloy are ! Tensile strength, or ultimate strength, which refers to the force necessary to break a test specimen when subjected to stretching. Tensile strength is ordinarily stated in "Ksi" thousands of pounds per square inch.

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!

Ductility, which is a measure of the material's ability to undergo appreciable plastic deformation before fracture. Elongation is a measure of ductility. Yield strength, which refers to the strength of a material where permanent and non-recoverable, or plastic, deformation occurs. Fracture toughness, which is a measure of the resistance a material has to the extension of a crack, and is indicative of a material's resistance to fracture when a crack is present.2 Hardness, which usually refers to the resistance to indentation and which, because it is a measure of plastic deformation, correlates with strength.

!

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!

Commercial alloy products may be produced through castings, by pouring molten alloy directly into a mold or die cavity of the required shape. They also may be wrought, where an alloy initially cast as an ingot or billet is subjected to mechanical working by such processes as rolling, extruding, forging, or drawing, to yield semifinished products from which end-use products are then fabricated. Wrought alloys can achieve a higher strength through temperature treatments, known as "aging." Aging changes one or more properties of an alloy without altering its chemical composition. Such heat treatments generally are low-temperature (e.g., 240-375 F), long-term processes (e.g., 5-48 hours). Heat-treatable wrought alloys obtain strength by the homogenous distribution of fine particles called grains that precipitate during the aging process. Age hardening may occur at room temperature over a few days, i.e., "natural aging," or more rapidly at some desirable temperature in an aging oven, i.e., "artificial aging." Alloys may be: (i) underaged, that is, not aged sufficiently to obtain the maximum value for a certain property, such as hardness or strength, at a particular aging temperature; (ii) peak aged, that is, aged sufficiently to obtain a maximum value for a certain property, such as hardness or strength, at a particular aging temperature; or (iii) overaged, that is, aged longer than the time necessary to obtain the maximum value for a certain property, such as hardness or strength, at a particular aging temperature. These aging levels can be depicted graphically as curves on charts with time and temperature axes. Underaging may be obtained by aging for shorter times or at lower temperatures than normally used to obtain a peak value. Artificial aging occurs in commercial ovens set at a chosen temperature (the set point). All commercial ovens encounter some fluctuation in temperature because once the set point is met, the blowers or the burners in the furnace turn off, only to revive when the temperature drops The Fracture Toughness Ratio (FTR) is the alloy's toughness at cryogenic temperature divided by its toughness at room temperature. Cryogenic temperatures are very cold, on the order of hundreds of degrees Fahrenheit below zero. -32

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a certain unacceptable level below the set point. This process iterates repeatedly about the set point, creating slight fluctuations of temperature. A so-called "working sensor" measures the response in the oven as a function of time or the overall temperature of the oven. By comparison, "thermocouples" measure the temperature on the objects being heated and are placed at key prescribed locations directly on those objects. In the industry, one may refer to the set point as a shorthand for the aging temperature, but ordinarily, in the specifications for aging treatments, the temperature is described in a way, such as a plus or minus range, that accommodates the variation that occurs in industrial ovens. 2. Aluminum Alloys

Aluminum has widespread use in the aerospace industry, not only because of its low density, but because it can be strengthened significantly through judicious alloying, as well as thermal and mechanical processing. Most aluminum alloys contain 90 to 96 percent aluminum, with the remainder comprising one or more elements added to provide a specific combination of properties and characteristics. The addition of these alloying elements is done, for example, to decrease density and increase fracture toughness. Such alloys may be produced by two different methods: (i) ingot metallurgy, for which the molten metal is cast into very large ingots, usually by a method called "direct chill (DC) casting;" and (ii) powder metallurgy, for which powder is produced by a process of rapid solidification or mechanical alloying. Lithium has been included in aluminum alloys since at least the early 1920s. As the lightest metallic element, its addition to aluminum results in a lightweight alloy that is potentially useful on aircraft because it yields lightweight structures that permit higher payload capacity and enhance general performance. Historically, however, the reduction in density accomplished by adding lithium to aluminum came with a cost undesirable reductions in ductility and fracture toughness.3 At least some studies attributed these reductions to the presence of sodium and potassium (and in some cases, calcium, hydrogen and sulfur), presumed present as impurities in the lithium metal used in preparing the alloy. To combat this problem, new alloys and processing techniques were developed to improve the aluminum-lithium alloys' properties, particularly strength and fracture toughness. In some instances, alloys are now solution heattreated, cold-worked and then artificially aged a process referred to as a T8 temper. In others, the addition of magnesium, as well as zinc, copper, or silicon, increases the strength of aluminum alloys.

Around 1954, fracture toughness became a particular concern for aircraft manufactures, after a series of airplane crashes were caused, in part, by poor fracture toughness. In 1978, certification of new aircraft required that manufacturers demonstrate that cracks would be detected prior to their reaching the critical length associated with catastrophic failure. This is why airplane pilots or other airline personnel are seen walking around the plane prior to take off they are looking for visible cracks. -4-

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B.

The Development of the Invention

As will be seen, it is important to note what Boeing knew and when it knew it. 1. Early Progress

A September 1973, report prepared by Boeing for the Air Force Materials Laboratory, entitled "Program to Improve the Fracture Toughness and Fatigue Resistance of Aluminum Sheet and Plate for Airframe Applications,"4 suggests that underaging of the so-called 2000 and 7000 series of aluminum alloys5 had not been contemplated by Boeing as of that time. The report indicated that Boeing had altered the chemistry of some aluminum-lithium alloys by substituting zirconium for chromium, and by reducing the iron and silicon therein. But, it indicated that research had shown that these alloys suffered from "[l]ow fracture toughness at high strength levels and wide variability in toughness for any given alloy and temper." According to the report, a literature study revealed that the use of underaging treatments for 7000-series alloys should be discouraged because "the material will be more susceptible to stress-corrosion cracking and to intergranular or exfoliation attack."6 In this regard, the report stressed For the 2000-series alloys, there is very little published information on the effects of thermomechnical treatments or composition variables on the stage II fatigue crack growth rates. Generally, as material is aged from the naturally aged T4 or T3 condition to the T6 to T8 condition, strength goes up and fatigue crack propagation rates increase for a given [strength] level. While Boeing indicated that lower aging treatments, at 280 F for the 2000 series, and at 325 F for the 7000 series, showed promise in improving fracture toughness, it was unsure how these relatively

This report stems from a government contract (No. F33615-72-C-1649) Boeing had with the United States Air Force in the early 1970s. In the instant suit, the government initially argued that the invention fell within the scope of this contract, but it ultimately failed to advance this argument at trial or in its post-trial briefs. A system of four-digit numerical designations is used to identify wrought aluminum alloys. The first digit indicates the alloying element present in the greatest mean percentage, dividing aluminum alloys into groups. For example, the 2xxx alloy group contains a greater mean percentage of copper than other alloying elements, while the 7xxx group contains a greater mean percentage of zinc than other alloying elements. The second digit indicates modifications of the original alloy or impurity limits, and the last two digits identify the specific aluminum alloy. Generally, "exfoliation" is corrosion that proceeds laterally from the sites of initiation along planes parallel to the surface, generally at grain boundaries or coating interfaces, forming corrosion products that force metal or coating away from the body of the material, giving rise to an undesirable layered appearance. -56 5

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low aging temperatures would affect strength levels. In addition, Boeing reported that it had not yet developed a preferred aging time for this process (indicating that several hundred hours could be necessary), concomitantly noting concerns that low temperature aging might result in problems with exfoliation resistance. This state of affairs began to change in the Fall of 1980. On September 8, 1980, Dr. William Quist of Boeing, one of the named inventors in the `682 patent, contacted Dr. Colin Baker of British Aluminum Company (BACo) to solicit the latter company's participation in a program to develop aluminum-lithium alloys for aircraft applications. On October 27, 1980, BACo responded

with a proposal indicating that "[t]he influence of composition and thermo-mechanical processing on the microstructure and the possibility of overcoming property deficiencies in particular toughness, will be the major objective of this work." Subsequently, Boeing established an independent research and development (IR&D) program that focused generally on improving aluminum alloys, and specifically, on the development of lithium-containing aluminum alloys. Documentation for this program acknowledged the fracture toughness difficulties that previously had haunted aluminum-lithium alloys, and stated that those problems "have been variously attributed to (1) impurities, (2) persistent slip bands and associated stress concentrations at grain boundaries, and (3) the . . . oxide layer on powder particles." This led the Boeing team to conclude that "[t]hese alloys will be examined in several conditions of aging and thermomechanical treatments (TMT) that will either alter grain size and/or strengthen the alloy by methods other than precipitation hardening." In 1981, Boeing allocated $122,000 for the program, assigning it the internal tracking number BCAC3315.7 Early data sheets for this project indicated that Boeing was pursuing zirconium levels comparable to those eventually listed in the `682 patent, with at least one alloy studied being within the exact compositional range of the patent. In 1981, Dr. G. Hori Narayanan was transferred to the commercial airplane division and started working with Dr. Quist. On March 10, 1981, Drs. Narayanan and Quist, as well as others, received authorization to work with BACo "to develop one or more low density lithium containing aluminum base alloys that will be suitable for aircraft structural applications." The authorization document stated that "[e]xperimental aluminum-lithium-type alloys will be made by both ingot and powder metallurgy during this investigation, since it has not been established which of these methods is to be preferred." Of the eight aluminum-lithium alloy compositions set out in this report, one fell within the compositional ranges of the `682 patent and five others would have, but for their lack of zirconium. Over the next year or so, Boeing worked with Aloca and Martin Marietta to develop alloys. During the second half of 1981, Boeing received eleven different alloys from BACo, which were evaluated for strength and toughness. Of the aluminum-lithium alloys that Boeing

Until the end of 1982, the project had a 3315 code, and then in 1983, the aluminumlithium activity was separated from other aluminum projects and a new code was used: 3327. Some of the projects under the 3315 designation were not proprietary and were reported outside the company, whereas the project under the 3327 code was proprietary. -6-

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considered for study in 1981, two had zirconium levels of 0.10 wt % and 0.15 wt %, one had a level of 0.25 wt %, and five contained no zirconium. BACo had already learned that certain levels of zirconium produced a desirable microstructure for aluminum-lithium alloys. By October of 1981, the inventors also had learned to limit the lithium percentage to 3.8 wt. Boeing continued to conduct aging treatments on alloys that showed promise in terms of strength and toughness. In the remainder of 1981 and through the first half of 1982, a study of the eleven BACo alloys showed some benefit to employing lower aging temperatures than what previously had been standard practice. To verify this, Boeing engineers aged the alloys using a range of aging temperatures, at 25 degree increments, from 250 to 350 F. Some of the alloys tested were within the composition set by the `682 patent. Data sheets from this period exhibit progress. One of the heat treatments employed in the second half of 1981 was for the aluminumlithium alloy BA 546, which was aged at 275 F for 72 hours. At least one data sheet showed that, by this time, the Boeing engineers had also learned to limit the presence of chromium. Throughout 1982, plaintiff expanded its effort to develop aluminum-lithium alloys as part of its IR&D program, toward that end obtaining alloys from four additional suppliers. After realizing that none of the eleven BACo alloys were showing the right range of properties, Drs. Narayanan and Quist initiated a phase two study, wherein Boeing modified the chemistry of the aluminum-lithium alloys by varying the amounts of the alloying elements, including not only lithium, but also copper, magnesium and zirconium, in an effort to get the right microstructure and combination of properties. As a result, on May 10, 1982, Boeing ordered a modified version of an alloy denominated B-18, which, unlike a prior version, contained zirconium, bringing it within the compositional range of the `682 patent. Shortly thereafter, around July of 1982, Mr. R. Eugene Curtis joined the Boeing Materials Technological Team. At this time, he designed an experiment to evaluate the aging process, further using aging temperatures from 250 to 350 F, with 25 degree intervals. Mr. Curtis decided to use low temperature underaging as a result of his experience with titanium alloys, in particular using aging temperatures (for aluminum-lithium alloys) of less than 300 F, much lower than the conventional aging temperatures of 325 and 350 F. Through this testing, the inventors generated aging curves from which they picked several candidate temperature/time combinations and generated strength and toughness data. On October 4, 1982, Mr. Curtis directed that a sheet of the B-18 alloy be aged for various times at temperatures of 350, 325, 305, 275, and 250 F, and then subjected to various tests, including tests of fracture toughness. 2. Boeing's Contract with the Air Force

Meanwhile, on May 5, 1981, the United States Air Force (the Air Force) issued a Request for Proposal (RFP) seeking proposals to advance the methods of powder metallurgy (P/M) in the development of aluminum-lithium alloys. Around June 18, 1981, Boeing responded to the RFP, proposing, via "rapid solidification technology" and a "powder metallurgical approach," to "incorporate higher amount[s] of lithium" in aluminum-lithium alloys and thereby reduce their

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density. Boeing further indicated that it would use several innovative metallurgical approaches to solve the ductility and toughness problems associated with high-lithium alloys. On December 23, 1981, Boeing and the Air Force signed a research and development contract, No. F33615-81-C-5053 (the 5053 contract), entitled Low Density Aluminum Alloy Development, which took effect January 4, 1982. The initial funding for this contract was $1,154,240, although an additional $200,000 was added later. According to its terms, the objective of the contract was "[t]o develop a family of powder aluminum alloys with significantly lower density and substantially higher specific modulus and strength than existing 7000-series aluminum alloys," with the properties of such alloys to "be tailored for specific classes of aerospace structural applications." While several provisions emphasized that the primary focus of the contract was the development of powder alloys, one provision indicated that "[a] portion of the program may be devoted to the investigation of ingot alloys to determine if property goals achieved with powder can be achieved by ingot metallurgy."8 The contract was to have three phases, described at one point therein, as follows: Phase I shall include organization of a contract team, preliminary application and goal assessment, and a state-of-the-art review. Phase II will address the development of alloys and processing methodologies meeting the goals defined in Phase I. Phase III will be a component design study utilizing the low density aluminum properties achieved in Phase II to assess potential payoff in Air Force airframe applications. Other parts of the contract indicated that from three to fifteen alloy systems or processes were to be selected for development. Essentially, under these phases, Boeing was to extrapolate the benefits that would be received by the Air Force if the best of the alloy systems and processes studied were employed in the structural components of various aircraft.
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In this regard, one clause of the contract further explained

Specific property goals will reflect particular classes of application requirements identified within the program. Initial target properties, likely to result in distinct alloy chemistries will include: 10% reduction in density, 30% increase in specific modulus, 20% increase in specific strength, and elevated temperature capability accompanied by reduced alloy density. The primary thrusts of the program will be alloy development, application studies, and goal assessment; however, relevant issues such as the effectiveness of various powder types, the effects of powder production and handling environment, and the development of a processing model to define the necessary requirements for achieving a 100% dense, high integrity, final product may also be addressed. Dr. Narayanan summarized his understanding of these provisions of the contract, testifying "We did include ingot metallurgy alloys in our program as a baseline for comparison . . . to see if the properties that are achieved by powder can be achieved via ingot metallurgy." -8-

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The contract incorporated, by reference, the Patents Right Clause of DAR 7-302.23(b) (Jul. 1981), which provided rules with respect to "Subject Inventions," defined as "any invention or discovery of the Contractor conceived or first actually reduced to practice in the course of or under this contract." With respect to such "Subject Invention[s] to which the Contractor retains principal or exclusive rights," paragraph (c) of the clause stated that the contractor "hereby grants to the Government a nonexclusive, nontransferable, paid-up license to make, use, and sell each Subject Invention throughout the world by or on behalf of the Government of the United States (including any Government agency) . . . ." This paragraph, however, continued that "[n]othing contained in this paragraph (c) shall be deemed to grant to the Government any rights with respect to any invention other than a Subject Invention." Paragraph (e) of the clause further provided that "[t]he Contractor shall establish and maintain active and effective procedures to assure that Subject Inventions are promptly identified and timely disclosed." Under paragraph (f), the Contractor forfeited to the United States "all rights in any Subject Invention" if it did not timely comply with the disclosure requirements of the contract. Finally, paragraph (i) of the clause required that provisions similar to those in the patent rights clause be contained in all subcontracts awarded under the contract. Dr. Terence Ronald was the Air Force project engineer for the 5053 contract. In addition, two of the inventors involved in the `682 patent were involved in the 5053 contract for Boeing, namely, Drs. William Quist and Hari Narayanan, who were responsible for the technical activities of the contract on behalf of Boeing. The other inventor of the `682 patent, Mr. Eugene Curtis, had nothing to do with the 5053 contract. As part of the contract and as "prime contractor," Boeing assembled a team of subcontractors that included Northrop Corporation, Georgia Institute of Technology, Kaiser Aluminum Center for Technology, Pratt & Whitney Aircraft Government Products Division, and International Nickel Company (INCO) Research and Development Center. Boeing executed formal subcontracting agreements with each of these team members, essentially agreeing to split the $1.35 million under the contract six ways, spread over a three-year period.9 The 5053 contract required Boeing to submit periodic reports to the Air Force, including technical reports and funding status reports. The first interim technical report, which covered the In responding to the draft request for proposals for this contract, Boeing had previously expressed concerns to the Air Force that the contract was inadequately funded, stating in a February 5, 1981, letter, that Another area of concern is that the funding level allocated for this program may be insufficient to achieve all the planned objectives. The basis for this concern is the actual costs incurred in our recent highly successful alloy development program which involved several participants. This program was conceived on the basis of known chemistry vs property relationships, utilized existing ingot technology, and therefore did not involve many unknowns. This is in contrast to the present program that requires more extensive team participation and the utilization of the less developed Al-Li alloy and P/M technology state-of-the-art. -99

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period from January to June of 1982, discussed the results of a massive state-of-the-art literature survey that was conducted on aluminum-lithium alloy development, focusing specifically on papers relating to improving the fracture toughness and ductility of such alloys. The survey led the contractors to focus on the development of compositions that were infeasible with the conventional ingot metallurgy (I/M) approaches, and to emphasize processing approaches unique to powder metallurgy (P/M) alloys. A significant portion of the report discussed past approaches to solve the fracture toughness deficiency of aluminum-lithium alloys, noting that "[s]everal recent investigations tried to improve the ductility and fracture toughness of Al-Li alloys without sacrificing high strength characteristics." In conclusion, the authors noted that these processes had "limited success" and that they often were unsuccessful "because the conventional I/M approach used was unsuitable."10 As a result of this study, 12 first iteration aluminum-lithium alloys, representing 3 different production methods, were identified for use in the 5053 contract seven rapidly solidified (R.S.) powder alloys, three mechanically alloyed (M.A.) powder alloys, and two "state-of-the-art" ingot alloys.11 The second interim report, covering July through December of 1982, included testing results of the ten P/M alloys, revealing that none of them exhibited acceptable levels of the combination of strength, ductility, and toughness required for use in aircraft applications. Aging studies resulted in charts comparing the hardness achieved for the P/M alloys at different aging treatments at less than peak strength, allowing researchers to determine the treatment(s) that would result in the "highest peak hardness." Based on "several recent investigations" by thirdparties which demonstrated that "significant improvements in the fracture toughness and ductility of Al-Li alloys can be achieved with small sacrifices in strength via underaging treatments, two underaged tempers were selected" for further testing. Other charts in the report compared conductivity and hardness under different aging treatments for five different P/M alloys, but none of these compared fracture toughness at a constant strength. The failure of the P/M alloys was

In a monthly status report for May of 1982, plaintiff included a paper presented at the High Performance P/M Aluminum Alloy session of the American Institute of Mining, Metallurgy, and Petroleum Engineers annual meeting in February, 1982, from Dr. Narayanan and two others from companies involved in the contract, entitled "The Heat Treatment, Microstructure and Mechanical Property Correlation in Al-Li-Cu and Al-Li-Mg P/M alloys." In this paper, the authors advised that "underaging treatments can be used as a satisfactory approach to improve the ductility of Al-Li type alloys with only small sacrifices in strength." However, the contractors were looking at aging treatments for previously developed P/M alloys, and did not compare fracture toughness versus underaging temperature at a constant strength. The ten powder alloys identified were to be produced for testing under the 5053 contract, and none were within the compositional range of the `682 patent. The two ingot alloys were "state-of-the-art," meaning they had already been developed. According to the report, the ingot alloys were included "to compare the best state-of-the-art ingot alloys with the RSR [rapid solidification rate] P/M materials developed during the program," with the understanding that the "program could incorporate ingot alloy development at a later date." -1011

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attributed to process deficiencies during powder concentration and extrusion, resulting in "undesirable microstructural characteristics," "compositional inhomogeneities," and poor bonding. As a result, the report identified the need to develop new controls and processes for both the composition and microstructure of these P/M alloys. The third interim report, which covered January through June, 1983, included results of preliminary testing on the two I/M baseline alloys, finding deficiencies in fracture toughness and strength that might be remedied via "further refinements in chemical composition and in heattreatment practices." Aging tests were performed on the I/M alloys, evaluating ductility and toughness at different degrees of underaging. A chart plotting curves of hardness versus time under different aging treatments was again produced, but no analysis was performed of fracture toughness versus aging temperature at a constant strength. In addition, a new P/M alloy produced through an improved "melt-spinning" process was added to the existing alloys being tested, and showed marked improvement over the earlier R.S. and M.A. powder alloys. The decision was made to abandon testing on the first iteration P/M alloys as currently produced, and to focus on developing new process and manufacturing techniques to create more suitable powder alloys.12 The fourth interim report, covering July through December of 1983, sought to address the consolidation and fabrication issues resulting in poor performance from the powder alloys. The changes proposed in this report included optimizing the atomization process to improve the microstructure and composition of the alloy powder, and developing a new consolidation/ extrusion process to minimize microstructure degradation. Further testing on the I/M alloys showed that they were still short of the three property goals established for the program, but an investigation was begun to determine whether the addition of germanium (up to 0.2 wt % max) to the ingot alloys would increase the alloys' strength and toughness properties. The report noted that industry advances in ingot technology had made their use in aerospace applications a reality, and that "the level of effort to be devoted to I/M alloy evaluation and development" was discussed at the third semiannual contract review meeting on November 10, 1983. It was determined that research should remain "focus[ed] on the development of P/M alloys that will surpass the new-generation I/M Al-Li alloys, particularly with regard to the density reduction goals." The main purpose of the program thus was still "to verify that P/M Al-Li alloys have commercial potential," as it was "impractical for this program to make a substantive contribution to Al-Li ingot technologies." Only "certain unusual developments" in I/M alloys, such as the addition of germanium, would be explored.

During the midst of this reporting period, the Air Force expressed concerns that Boeing and its partners were not sharing enough information from their accumulated experience. For example, on January 18, 1983, personnel from the Air Force's Structural Metals Branch wrote a letter to Boeing acknowledging a shortage of funds for the 5053 contract, but indicating the Air Force's disappointment with "the level of `openness'" displayed by Boeing personnel as to their aluminum-lithium alloy IR&D program. -11-

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The fifth interim report, which covered January through September of 1984, concluded that despite improvements in process technology, practical difficulties prevented any of the improved R.S. P/M alloys from achieving the microstructural refinements necessary to meet the project goals. All further efforts on these alloys were abandoned. However, the improved M.A. P/M alloys did show "considerable promise of meeting the low density" goals of the program, and testing and evaluation of these alloys and the new "melt-spinning" P/M alloys was to continue. Beryllium-containing aluminum-lithium P/M alloys that were the focus of recent studies by Lockheed also showed the potential for significant density reduction, and therefore "warrant[ed] consideration in the present program." The addition of germanium to the ingot alloys did not conclusively show any significant beneficial effects, but one of the new state-ofthe-art base I/M alloys resulting from recent advances in the industry appeared to meet the strength and toughness goals, and nearly met the density reduction goal. The newer ingot alloys, despite several production and properties related problems that remained to be solved, were viewed as having "prospects [that] are quite good for the near-term development and implementation of high strength alloys that are acceptable replacements for the existing aerospace aluminum alloys," and their evaluation was "continued on a limited basis as they represent the baseline comparison for the P/M alloys being developed" in the program. 3. The Patent Takes Final Form

Meanwhile, on October 5, 1982, Mr. Curtis generated a chart for B-18, plotting data at 325 and 350 F, which showed, for example, that if the alloy was aged at 350 F for four hours it would yield a certain strength and toughness combination. This data is identical to the data provided for these temperatures in figure 1 of the patent, a chart that plots the charpy test (for fracture toughness) on the vertical axis and ultimate tensile strength (strength) on the horizontal axis. At the same time, the inventors also generated data for temperatures for 275 and 305 F. The data from these charts is also reflected in figure 1 of the `682 patent. Then, on October 15, 1982, Mr. Curtis charted the results for the full range of aging temperatures, including 250, 275, and 305 F. By November 1, 1982, the inventors started applying their process to all the alloys they received. The heat treatments applied to the alloys were as follows, listing the temperature and then the time: 275 F for 24 hours; 275 F for 72 hours; 250 F for 72 hours; and 300 F for 24 hours. This testing was funded fully by Boeing under its IR&D program. By November 5, 1982, Mr. Curtis had recommended that the B-18 alloy, which fell within what would become the composition of the `682 patent, be aged at 250 F for seventy-two hours. At this time, according to Dr. Narayanan's testimony at trial, "[w]e knew we had a novel process on our hands and that this process was the ability to dramatically improve fracture toughness without sacrificing strength, or at a preselected strength level, we can more than double the fracture toughness." On December 16, 1982, the data resulting from the November 1 heat treatments was plotted on a chart similar to figure 1 of the `682 patent. On July 22, 1983, the inventors submitted an invention disclosure form to the Boeing patent department, which described the invention as "Low Temperature Aging of Aluminum/Lithium Alloys." Summarizing the essence -12-

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of the invention, the inventors set forth a figure, reflecting data recorded on December 10, 1982, that would later be used in the patent, explaining that "[l]ow temperature aging strengthens the [aluminum-lithium] alloys without reducing their toughness significantly compared to aging at high temperatures, resulting in an improved combination of strength and toughness for low temperature aging." At trial, Dr. Narayanan explained that he and the other inventors did not file the disclosure sooner because they were busy testing alloys and "were involved in the Air Force contract." On the same day, the inventors wrote up a chart showing the essence of the invention as applied to three alloys. The invention disclosure was signed by the inventors on December 6, 1983.
The application for the `682 patent was filed with the U.S. Patent and Trademark Office (PTO) on November 21, 1985, and claims the earlier filing date of December 30, 1983, through a parent application that was abandoned (the `227 application) and of which the `682 patent is a continuation-in-part. Silver was not identified as an alloying constituent in the original specification of the `227 application. In the second half of 1986, Dr. Narayanan wrote a summary

of the activities that were conducted under the project to improve aluminum-lithium alloys from 1981 to 1986. Therein, he stated that a main accomplishment was to "improve fracture toughness without sacrificing strength" for aluminum-lithium alloys, which is consistent with the `682 patent. Within this summary, Dr. Narayanan focused on the tests that were performed on ten of the hundred or so alloys he and the others tested. Nine of these alloys were within the composition of the `682 patent. The bulk of the heat treatments for these ten alloys were within the time and temperature ranges for the `682 patent. These tests were conducted in 1982 under the IR&D program.
On January 12, 1989, the PTO mailed a Notice of Allowance for the `682 patent. Then, on April 19, 1989, Boeing submitted a terminal disclaimer, disclaiming that terminal portion of the `682 grant that extended beyond the expiration of the earlier to expire of U.S. Patent Nos. 4,603,029 and 4,735,774.13 The PTO received the terminal disclaimer on April 24, 1989. On June 20, 1989, the `682 patent was issued on an invention by R. Eugene Curtis, William E. Quist (deceased) and G. Hari Narayanan for "Low Temperature Underaging Process for Lithium Bearing Alloys."14

U.S. Patent No. 4,735,774 expired on April 10, 1996, for failure to pay the maintenance fee, and U.S. Patent No. 4,603,029 expired on July 29, 1998, for failure to pay the maintenance fee.
As the inventors were all employees of Boeing at the time they made the invention, they were each obliged to assign their invention to Boeing, and did so. The assignment of the `682 Patent to Boeing is recorded in the records of the U.S. Patent and Trademark office. Dr. Narayanan, under an invention agreement, receives one third of 20 percent of any income from the `682 patent received by Boeing.
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C.

U.S. Patent No. 4,840,682

The `682 patent teaches a process for significantly enhancing the combination of strength and fracture toughness properties of aluminum-lithium alloys by underaging the alloys at temperatures ranging from 200 F to below 300 F for relatively long periods of time. The patent
consists of seven claims, the latter six of which are dependent, in some fashion, upon the first. That first claim recites as follows: A process for improving the fracture toughness of an aluminum-lithium alloy without detracting from the strength of said alloy, said alloy consisting essentially of: Element Li [Lithium] Mg [Magnesium] Cu [Copper] Zr [Zirconium] Mn [Manganese] Fe [Iron] Si [Silicon] Zn [Zinc] Ti [Titanium] Other trace elements Each Total Al [Aluminum] Amount (wt. %) 1.0 to 3.2 0 to 5.5 0 to 4.5 0.08 to 0.15 0 to 1.2 0.3 max 0.5 max 0.25 max 0.15 max 0.05 max 0.25 max Balance,

said alloy first being formed into an article, solution heat treated and quenched, said process comprising the step of aging said alloy article to a predetermined underaged strength level at from about 200 F. to less than 300 F. Claim 7 of the `682 patent reads: "The product produced by the process of claim 1," and is a "product-by-process" claim. Various of the terms in these claims have been construed by the court, either independently or consistent with the parties' stipulation. See Boeing Co. v. United States, 57 Fed. Cl. 22 (2003). Those definitions are set forth in the margin.15

15

The parties have stipulated to the meaning of the following terms: An "Aluminum-Lithium alloy" has the same meaning as "said alloy" in the claims of the `682 patent and means an aluminum alloy of the composition specified in each respective claim. "Said alloy article" is a short-hand term for the article resulting from the process step "said alloy article first being formed into an article." -14-

a.

b.

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The summary of the invention provided The present invention provides a method for aging aluminum-lithium alloys of various compositions at relatively low temperatures to develop a high and improved fracture toughness without reducing the strength of the alloy. Simply, after the alloy is formed into an article, solution heat treated and quenched, the alloy is aged at a relatively low temperature for a relatively long time. This process may be generally referred to as low temperature underaging. More specifically, the alloy can be aged at temperatures ranging from 200 F. to below 300 F. for a period of time ranging from 1 up to 80 or more hours. This low temperature aging regimen will result in an alloy having a greater fracture toughness, often on the order of 150 to 200 percent, than that of materials aged at conventional higher temperatures while maintaining an equivalent strength. "[T]he treatment will result in an aluminum-lithium alloy having an ultimate strength typically on the order of 45 to 95 ksi," the specification provided, "depending on the composition of the particular alloy," with "[t]he fracture toughness of the alloy . . . greater, often on the order of 1 to 2 times greater, than that of similar aluminum-lithium alloys aged to equivalent strength levels by conventional aging treatments at temperatures greater than 300 F."

c.

"Amount (wt%)" means the quantity of a chemical element(s) in the alloy composition expressed as a percentage of the total weight of the composition. "Solution heat treated" means that the alloy has been held at a suitably high temperature long enough to permit one or more constituents to enter into solid solution. "Quenched" means to cool rapidly from an elevated temperature by contact with a liquid, a gas or a solid. "Aging" means to change one or more of the properties of an alloy without changing its chemical composition, usually due to precipitation from a solid solution. "Underaged" means that the alloy has not been aged sufficiently to obtain the maximum value for a certain property, such as hardness or strength, at a particular aging temperature.

d.

e.

f.

g.

Per this court's Markman opinion, a "trace element" means an undesired impurity, Boeing, 57 Fed. Cl. at 28, while "consisting essentially of" means that a group of listed ingredients is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention, id. at 29. -15-

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D.

The External Fuel Tank of the Space Shuttle

Boeing claims that panels on the Shuttle's external tank fabricated from Alloy 2195 infringe upon its `682 patent. As the accompanying NASA diagram reveals, the Shuttle, officially called the Space Transportation System, consists of three main components: the reusable orbiter, two reusable solid rocket motors, and a large, brownishorange, expendable external tank. The external tank not only carries the propellant for the Shuttle's main engines, but also serves as the structural backbone of the spaceship. While the Shuttle is on the launch pad during ignition and during its assent, a number of physical forces or "loads" act upon it, all of which are translated into and reacted by the external tank. The first Shuttle mission was in 1981. The first external tanks are referred to, retrospectively, as Standard Weight Tanks (SWT). A weight reduction program in the early 1980s resulted in a redesigned external tank, the Lightweight Tank (LWT), which was approximately 5 tons lighter than the SWT. Then, as previously described, the need arose to shed further weight from the Shuttle, resulting, in 1995, in the Super Lightweight Tank (SLWT), which, as noted, is approximately 7,500 pounds lighter than the LWT. Each SLWT is 154 feet long and weighs 58,500 pounds empty. The first SLWT flew in a Shuttle mission in 1998. The prime contractor to NASA for the production of the external tanks is Lockheed Martin Space Systems Company (its predecessor, Martin Marietta Corporation, had this role in the early days of the SLWT project). Lockheed Martin received the contract for the redesign of the external tank in 1994. Its suppliers include AHF-Ducommun (AHF) and AMRO Fabricating Corporation (AMRO). In some cases, these subcontractors contracted with others to perform processing associated with the external tank. For example, Tycorm, a subcontractor to AHF, sometimes aged panels of the SLWT. For reasons previously discussed, Lockheed Martin not only needed to reduce the density (weight reduction) of the alloys used on the external tank, but also needed to employ an alloy that had a good strength to fracture toughness ratio. The solution was Alloy 2195, which is both lighter and stronger than the alloy originally used in the fuel tank, Alloy 2219. Alloy 2195 is a member of the Weldalite family, and contains both silver and magnesium. It generally falls within the specific compositional range for the `682 patent, except for the addition of silver. Below is a side-by-side comparison of the composition of Alloy 2195 and the "acceptable composition" in the `682 patent:

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Element

2195 Amount (wt %)
0.8 - 1.2 0.25 - 0.8

`682 patent for "Acceptable" Amount (wt %)
1.0 - 3.2 0 - 5.5

Li (lithium) Mg (magnesium)

Ag (silver) Cu (copper) Zr (zirconium) Mn (manganese) Fe (iron) Si (silicon) Zn (zinc) Ti (titanium) Other trace elements: each total Al (aluminum)

0.25 - 0.6 3.7 - 4.3 0.08 - 0.16 0.25 max 0.15 max 0.12 max 0.25 max 0.10 max

-0 - 4.5 0.08 - 0.15 0 - 1.2 0.3 max 0.5 max 0.25 max 0.15 max

0.05 max 0.15 max Balance

0.05 max 0.25 max Balance

As the trial exhibit below reveals, the major components of the SLWT are the Liquid Oxygen (LO2 or LOX) tank, the intertank and the Liquid Hydrogen (LH2) tank. The LO2 tank and the LH2 tank the parts at issue herein are welded pressure vessels, joined together by the intertank. These tanks originally were made of Alloy 2219. The LO2 tank comprises, in part, a cylindrical section, an aft dome and two ogive sections. As can be seen from the accompanying exhibit, dome gores form the hemispherical portion of the aft end of the LO2 tank, while barrel panels and ogive gores form the cylindrical portion and pointed forward end of that tank, respectively. At one point, all of these parts were made from Alloy 2195.16 The intertank, a cross-beamed segment that connects the LO2 and LH2 tanks has never been made of Alloy 2195.

Alloy 2195 is not the only aluminum-lithium alloy that has been used on the SLWT. Another such alloy, Alloy 2090, is used mainly as part of the support structure in the intertank and as part of the support structure in the baffle inside the LO2 tank. Alloy 2090 does not contain silver. -17-

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The LH2 tank comprises, in part, four cylindrical sections (formed by barrel panels), a forward dome and an aft dome (formed by gores), and attachment hardware for the orbiter. In creating the SLWT, the LH2 tank was redesigned from a welded cylinder ringframed, stiffened configuration to an orthogrid, or integrally machined, barrel panel.17 At one point, almost all these parts were made from Alloy 2195. In terms of surface area, approximately 90 percent of the Alloy 2219 in the welded, pressure compartment applications of the external tank was changed to Alloy 2195.18 The panels formed from Alloy 2195 are not all the same thickness. In 1994, Lockheed experienced a problem with the fracture toughness ratio. This ratio was improved when a "tiger team" made up of NASA and Lockheed employees decided to drop the underaging treatment for Alloy 2195 from 320 F to 290 and 295 F. The LH2 gores, LO2 ogives, LO2 gores, all aft and one forward ogive, caps, and the LO2 barrels are aged at a temperature of [ ]. AMRO conducted the aging treatments for the LH2 barrel panels, beginning, in 1995, by outsourcing the process to Astro; AMRO began aging the panels itself starting in 1996. The

The LH2 barrel panels could have been made with an orthogrid configuration with the Alloy 2219 material previously used in the tank. However, the higher strength of Alloy 2195 allows the orthogrid pattern to be machined deeper, thus resulting in a weight savings. Subsequently, due to manufacturing concerns, some of the ogives and domes were changed back to Alloy 2219, with other offsetting weight reductions. -1818

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aging cycle for a LH2 barrel panel begins [ ]. This process iterates repeatedly about the set point.19
E. The Lawsuit

On November 21, 2000, plaintiff filed its complaint in this action. On May 13, 2003, a Markman hearing was held in this case, where the terms "consisting essentially of" and "other trace elements" were construed. An opinion construing these terms was issued June 20, 2003, see

Boeing, supra. Following discovery, trial in this matter was conducted between November 1519, 2004, with post-trial briefs, a further stipulation of facts, and closing arguments thereafter.
II. DISCUSSION

As noted, Boeing seeks compensation from the United States for NASA's unlawful use of the `682 patent in developing the SLWT for the Space Shuttle. D efendant's responses run the gamut. In cascading fashion, it claims that: (i) the relevant claims of the `682 patent are invalid due to anticipation and obviousness in light of the prior art, or limited by a terminal disclaimer; (ii) if those claims are valid, there is no infringement here because, inter alia, the content of Alloy 2195 and the process used to age the panels of the external fuel tank are different than that claimed in the `682 patent; and (iii) at all events, NASA had a license to employ the claimed invention. The court will consider defendant's assertions seriatim, but first must define a few additional terms in the patent. A. Claim Construction

"It is a bedrock principle of patent law," the Federal Circuit has stated, "that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004); see also Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339 (1961). Construing claims, including the terms of art found therein, is a matter of law. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc); Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). To ascertain the meaning of a claim term, the court refers to "those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean." Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (quoting Innova, 381 F.3d at 1116). These sources include "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning

Randy Mitchell of AMRO supervised the aging treatments of the LH2 barrel panels. At his deposition, he testified that the working sensor of the aging oven "stay[ed] at 300 within a couple degrees." He did not, however, indicate as to any specific percentage of time that the temperature of the aging ovens for LH2 barrel panels, as indicated by the working sensor, was above or below 300 F. -19-

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of technical terms, and the state of the art." Id. (citing Innova, 381 F.3d at 1116). It is important to "read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313.
The Federal Circuit further has instructed that, "[w]hen construing a claim, a court should look first to the intrinsic evidence, i.e., the claims themselves, the written description portion of the specification, and the prosecution history." Bell & Howell Document Mgt. Prods. Co v. Altek Sys., 132 F.3d 701, 705 (Fed. Cir. 1997). "Such intrinsic evidence is the most significant source of the legally operative meaning of disputed claim language," the Federal Circuit has stated, because it "constitute[s] the public record of the patentee's claim, a record on which the public is entitled to rely." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed. Cir. 1996). Hence, the starting point for determining the meaning of a claim is the language of the claim itself. Id.; see also Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). The words of a claim "are generally given their ordinary and customary meaning," Vitronics Corp., 90 F.3d at 1582, that is, "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips, 415 F.3d at 1313; see also Innova , 381 F.3d at 1116. Further, the specification "is always highly relevant to the claim construction analysis . . . . [I]t is the single best guide to the meaning of a disputed term." Vitronics Corp., 90 F.3d at 1582.20 Finally, "[t]he prosecution history is often helpful in understanding the intended meaning as well as the scope of technical terms, and to establish whether any aspect thereof was restricted for purposes of patentability." Vivid Technologies, Inc. v. Am. Science & Eng'g, Inc., 200 F.3d 795, 804 (Fed. Cir. 1999). It "can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Phillips, 415 F.3d at 1317; see also Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1206 (Fed. Cir. 1992), cert. denied, 506 U.S. 1053 (1993). But, what of extrinsic evidence, such as dictionaries, encyclopedias, treatises and expert testimony? In Phillips, the Federal Circuit rejected the emphasis given such evidence in Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), cert. denied, 538 U.S. 1058 (2003), cautioning that giving undue weight to extrinsic evidence "improperly restricts the role of the specification in claim construction." Phillips, 415 F.3d at 1320. While the court, in Phillips, thus clarified that intrinsic evidence should be accorded greater weight than extrinsic evidence, it did not discount the latter category of evidence altogether, finding that it "can shed useful light on the relevant art." Id. at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). Accordingly, extrinsic evidence "may be considered if the court deems it helpful in determining the true meaning of language used in the patent claims," id. at 1318 (internal quotations omitted), provided the court "attach[es] the appropriate weight . . . to those sources in light of the statutes and policies that inform patent law." Id. at 1324; see also Terlep v. Brinkmann

See also Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) ("The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.").

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Corp., 418 F.3d 1379, 1382 (Fed. Cir. 2005). In particular, judges must consider dictionaries while keeping in mind that "the specification is the `single best guide to the meaning of a disputed term,' and that the specification `acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.'" Phillips, 415 F.3d at 1321 (quoting Vitronics Corp., 90 F.3d at 1582); see also Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004). As noted, this court has previously construed various elements of the claims at issue. Boeing, 57 Fed. Cl. at 28-29. Although those constructions predated Phillips, this court fortunately concluded that "[t]he meaning of the elements in question is derivable from the intrinsic record, standing alone . . . consistent with the specification and in the context of the prosecution history." Boeing, 57 Fed. Cl. at 28. The constructions thus remain valid in the wake of the Federal Circuit's more recent teachings on the subject. Nevertheless, two additional elements of the `682 patent must yet be construed, as reflected in the highlighted terms of claim 1 which reads "said process comprising the step of aging said alloy article to a predetermined underaged strength level at from about 200 F. to less than 300 F." 1. "predetermined underaged strength level"

The initial focus here is on the word "predetermined." Plaintiff contends that the "predetermined" underaged strength is determined before or independently from the other portions of the process and then the aging time and temperature are tailored to achieve that strength level. Not so, defendant submits. Rather, it asserts, the "`underaged strength level' is predetermined by the selection of the aging time and temperature," with the resulting strength level thereby being "predetermined" even though the result is not known until after the process is completed. Plaintiff retorts that if this were the proper construction, the word "predetermined" would have no meaning and thus serve no purpose in claim 1 of the `682 patent. The word "predetermined" is a simple term that yields up its meaning quite readily. The Federal Circuit has indicated, in several patent cases, that "[t]he ordinary meaning of `predetermine' is `to determine beforehand.'" Ferguson Beauregard/Logic Controls v. Mega Sys. LLC, 350 F. 3d 1327, 1340 (Fed. Cir. 2003) (citing Webster's Third New International Dictionary 1786 (1966)).21 This ordinary meaning is not altered by the `682 patent, the specification of which provides that the process enumerated is designed to maintain (or not reduce) the strength of a given aluminumlithium alloy while improving its fracture toughness. In other words, the process allows one to age an alloy to a "predetermined" strength level, with the result, according to the specification, that

See also, e.g., Pause Technology, LLC v. TiVo, Inc., 419 F.3d 1326, 1333 (Fed. Cir. 2005) ("predetermined duration" was "determined before the time interval began"); Koito Mfg. Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1148 (Fed. Cir. 2004) ("predetermined general direction" means the "prevalent direction of the plastic flow be determined before the injection of the liquid plastic into the mold"); Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1353 (Fed. Cir. 2003) (district court properly defined "predetermined amount" as "an amount determined beforehand"); and see Mediacom Corp v. Rates Tech., 4 F. Supp. 2d 17, 30-31 (D. Mass. 1998) ("predetermined" signifies that parameters "must be selected substantially in advance").

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"[t]he fracture toughness of the alloy will be greater, often on the order of 1 to 2 times greater than that of similar aluminum-lithium alloys aged to equivalent strength levels." That the desired strength of the alloy is to be determined in advance is apparent from the fact that, according to the claim language, the process relates to the aging of already-formed articles, rather than raw metal the description refers to these as "usable article[s]" created "by conventional mechanical forming techniques such as rolling, extrusion, or the like," and gives as an example aircraft structural parts. Logic suggests that one would not fabricate a part out of a given aluminum-lithium alloy without knowing whether the strength the aging process would yield would work for the purpose intended. As Dr. Hunt testified, "[p]redetermined strength level comes and is typically driven by the requirements of the design," that is, the process of the patent is designed to obtain an article whose strength is known beforehand, and to do so, while improving fracture toughness. By contrast, defendant's expert, Dr. Starke, could not specifically define what he meant by "a predetermined underaged strength level," stating, somewhat diffidently, only that such a level was predetermined by the time and temperature selected on aging curves that would need to be developed for a particular alloy and suggesting, under that scenario, that strength thus could be "predetermined" even if it was not known beforehand. In so asserting, however, Dr. Starke seemingly ignored the fact that the patent purports to provide precisely those aging curves for alloys within its composition range. Pressed, he admitted that under his definition, the word "predetermined" was superfluous and thus played no role in giving content to the patent.22 This view conflicts not only with the surrounding claim language, but also with the basic notion that "[a] claim construction that