B-168013, APR. 1, 1970

B-168013, APR. 1, 1970

CONTRACTS--DATA, RIGHTS, ETC.--USE BY GOVERNMENT--INTERNAL USE CONTRACTOR PROTESTING TRANSPORTATION DEPT.'S CONTRACT AWARDS AND PURPORTED VIOLATION OF PROTESTANT'S RIGHTS IN PROPRIETARY INFORMATION FURNISHED GOVT. IS DENIED PROTEST SINCE ADMINISTRATIVE REPORT ON FACTS IS ACCEPTED, IN VIEW OF TECHNICAL QUESTIONS INVOLVED, AND REFLECTS PROPRIETARY DATA WAS RETURNED WITHOUT BEING RELEASED TO OTHERS AND THAT UNSOLICITED PROPOSALS, RESULTING IN SEPARATE SOLE-SOURCE CONTRACTS, WERE TECHNICALLY DIFFERENT FROM PROTESTANT'S. SINCE PROTESTANT'S COMMUNICATIONS CONCEPTS WERE BASICALLY THOSE DEVELOPED BY GOVT. SCIENTIST, IT IS QUESTIONABLE PROTESTANT'S "G-LINE" DATA WAS PROPRIETARY FOR PURPOSE OF GOVT.'S INTERNAL USE. MOREOVER, AVAILABILITY OF REMEDY FOR GOVT.'S TRADEMARK INFRINGEMENT IS DOUBTFUL. SEE CT. CASE CITED.

TO SURFACE CONDUCTION, INCORPORATED:

REFERENCE IS MADE TO YOUR LETTERS OF SEPTEMBER 29 AND OCTOBER 28, 1969, TO OUR OFFICE AND THE LETTER OF NOVEMBER 18, 1969, ADDRESSED TO THE DEPARTMENT OF TRANSPORTATION, ON BEHALF OF SURFACE CONDUCTION, INCORPORATED (SCI), WHICH IS PROTESTING AGAINST THE AWARD OF CONTRACTS FOR STUDIES OF COMMUNICATIONS TECHNIQUES FOR HIGH SPEED GROUND TRANSPORTATION VEHICLES TO CONCERNS OTHER THAN SCI WITHOUT GIVING SCI A SHARE IN THESE AWARDS.

THE LETTER OF SEPTEMBER 29, 1969, RAISES THE ISSUE WHETHER THERE WAS ANY VIOLATION BY THE GOVERNMENT OF SCI'S RIGHTS IN PROPRIETARY INFORMATION AND IN THIS REGARD IT IS STATED AS FOLLOWS:

"AFTER INVITING AND RECEIVING A BID, IN 1966, FROM SURFACE CONDUCTION INC; A SMALL NEW YORK BUSINESS FIRM, THE DEPARTMENT OF TRANSPORTATION APPROPRIATED THE NON-RADIATING WAVE CONCEPT DEVELOPED BY THIS FIRM IN TWENTY YEARS OF RESEARCH, AND HANDED IT OVER TO FIVE LARGE BUSINESS FIRMS * * * IN ORDER TO HAVE IT EXPLOITED BY THEM, UNDER CONTRACT WITH, AND AT THE EXPENSE OF THE UNITED STATES GOVERNMENT.

"AMONG THESE FIVE CONCERNS, IS A LARGE FOREIGN CORPORATION, THE JAPANESE FIRM OF SUMITOMO.

"THIS CONSTITUTES A WILLFUL AND UNJUSTIFIED EXCLUSION OF A SMALL AMERICAN BUSINESS, FROM A MARKET FOR WHICH IT IS QUALIFIED AND IN WHICH IT IS ENTITLED TO PARTICIPATE." A STATEMENT FROM SCI DATED SEPTEMBER 22, 1969, ATTACHED TO THE LETTER OF SEPTEMBER 29, 1969, STATES THAT THE EXCLUSION OF SCI FROM THE COMMUNICATIONS STUDIES FOR HIGH SPEED GROUND TRANSPORTATION VEHICLES AND THE AWARDS TO OTHER CONCERNS REPRESENTS "A GROSS CASE OF WILL FULL DISCRIMINATION". ALSO, IT IS URGED THAT THE MANNER IN WHICH THE DEPARTMENT OF TRANSPORTATION AND ONE OF ITS CONTRACTORS HAS MADE USE OF SCI'S REGISTERED "G-LINE" TRADEMARK WAS APT TO CAUSE "CONFUSION" AND THUS IRREPARABLE HARM TO SCI AND ITS FOUNDER. THE STATEMENT OF SEPTEMBER 22 REQUESTS AN INVESTIGATION AND INDEMNIFICATION TO SCI AND ITS FOUNDER FOR DAMAGES RESULTING FROM SCI'S LOSS OF A RIGHTFUL MARKET AND FOR OBFUSCATION OF SCI'S IDENTITY AS THE DESIGNER OF THE "G-LINE."

THE LETTER OF OCTOBER 28, 1969, ADVISES THAT IN A LECTURE GIVEN BY AN ENGINEER IN THE DEPARTMENT OF TRANSPORTATION, CERTAIN TRANSMISSION LINES WHICH WERE NOT MANUFACTURED BY SCI WERE REFERRED TO AS "SURFACE CONDUCTION LINES".

THE REPORT FROM THE DEPARTMENT OF TRANSPORTATION ADMITS THAT SCI DID SUBMIT SEVERAL PROPOSALS TO THE OFFICE OF HIGH SPEED GROUND TRANSPORTATION (OHSGT) TO STUDY THE APPLICATION OF THE GOUBAU LINE ("G LINE"), AS A MEANS FOR COMMUNICATING WITH HIGH SPEED GROUND VEHICLES. THE REPORT GOES ON TO STATE THAT SCI VOLUNTARILY WITHDREW ITS PROPOSALS ON JUNE 9, 1966, AND THAT NEGOTIATIONS WERE CONDUCTED WITH THAT CONCERN UNTIL THAT DATE. THE ADMINISTRATIVE POSITION IS THAT OHSGT AND SCI WERE UNABLE TO AGREE TO TERMS ON THE "G-LINE" PROPOSALS BECAUSE OF BASIC INSUFFICIENCIES IN THE PROPOSALS. PURSUANT TO SCI'S REQUEST ALL OF SCI'S PROPOSALS INCLUDING ALL OF THE PROPRIETARY MATERIAL HELD BY THE GOVERNMENT WERE RETURNED TO SCI.

THE DEPARTMENT OF TRANSPORTATION HAS FURNISHED THE ADDITIONAL FOLLOWING BACKGROUND INFORMATION REGARDING THE AWARD OF THE STUDIES CONTRACTS TO OTHER THAN YOUR CONCERN:

"2. IT WAS THE OPINION OF OHSGT THAT SOME STUDY OF THE APPLICATION OF THE GOUBAU LINE TO COMMUNICATIONS WITH HIGH SPEED GROUND VEHICLES WAS VERY RELEVANT TO THE WORK OF OHSGT. ACCORDINGLY, ON MARCH 31, 1967, A DECISION WAS MADE TO HAVE THE STUDY DONE BY THE INSTITUTE FOR TELECOMMUNICATIONS SCIENCES OF THE ENVIRONMENTAL SCIENCE ADMINISTRATION (ESSA) IN THE DEPARTMENT OF COMMERCE. ESSA IS AN ENTITY OF THE GOVERNMENT WELL QUALIFIED TO PROVIDE SUCH SCIENTIFIC EVALUATION SERVICES TO OTHER AGENCIES WITHIN THE GOVERNMENT. FURTHERMORE, AT THE TIME OF THE STUDY, OHSGT WAS ALSO AN OPERATING AGENCY WITHIN THE DEPARTMENT OF COMMERCE. IT IS NOTED THAT THIS DECISION WAS MADE ONLY AFTER IT HAD BEEN DETERMINED THAT THE STUDY WAS ESSENTIAL TO THE WORK OF OHSGT, AND AFTER UNSUCCESSFUL EFFORTS TO REACH AGREEMENT WITH SCI FOR THE PERFORMANCE OF THE STUDY.

"3. ESSA WAS GIVEN THE TASK OF EVALUATING THE GOUBAU LINE. IN ORDER TO ASSIST ESSA IN PROPERLY PERFORMING THIS EVALUATION, IT WAS GIVEN THE FOLLOWING CATEGORIES OF INFORMATION NONE OF WHICH WAS PROPRIETARY TO SCI, TO WIT:

"A. TECHNICAL INFORMATION ON THE 'G' LINE GATHERED FROM VARIOUS TECHNICAL PAPERS AND JOURNALS AVAILABLE TO THE GENERAL PUBLIC AND SUPPLIED BY OHSGT.

"B. COPIES OF RELEVANT PATENTS GENERALLY REGARDED AS PART OF THE PUBLIC RECORD.

"4. CONCURRENT WITH THE STUDIES AT ESSA IT WAS DEEMED APPROPRIATE BY OHSGT TO ENTER INTO CONTRACTS WITH SEVERAL RESEARCH ORGANIZATIONS TO STUDY ALTERNATIVE SYSTEMS AND TECHNIQUES FOR * * * USE IN COMMUNICATING WITH HIGH SPEED GROUND VEHICLES. * * * IN EACH INSTANCE, CONTRACTS AROSE FROM UNSOLICITED PROPOSALS FROM EACH RESPECTIVE CONTRACTOR." TWO OTHER MATTERS ARE REFERRED TO WITH REGARD TO THE ABOVE INFORMATION. THE ADMINISTRATIVE REPORT STATES THAT THE ESSA STUDY CONCLUSIVELY CONFIRMED THE FINDING OF OHSGT THAT THE SCI PROPOSALS WERE TECHNICALLY INSUFFICIENT. WE ARE ADVISED THAT THE "G-LINE" WAS DEVELOPED WHILE DR. GOUBAU WAS IN THE EMPLOY OF THE GOVERNMENT; THEREFORE, THE GOVERNMENT APPLIED FOR A PATENT FOR THE "G-LINE" WITH THE COMMERCIAL RIGHTS BEING RESERVED TO DR. GOUBAU. THE REPORT STATES THAT THERE HAS NOT BEEN ANY COMMERCIAL USE OF THE "G-LINE". WE HAVE ALSO BEEN ADVISED THAT THE CONCEPTS IN THE PROPOSALS SUBMITTED BY SCI TO OHSGT, WERE BASICALLY THE SAME AS THOSE DEVELOPED BY DR. GOUBAU WHILE EMPLOYED BY THE GOVERNMENT.

WITH RESPECT TO WHETHER SCI'S PROPRIETARY INFORMATION WAS RELEASED TO ANY OF THE CONTRACTORS, THE DEPARTMENT OF TRANSPORTATION'S REPORT STATES AS FOLLOWS:

"NONE OF THE CONTRACTORS AT ANY TIME RECEIVED ANY PROPRIETARY INFORMATION CONTAINED IN ANY OTHER PROPOSAL SUBMITTED TO THE GOVERNMENT, INCLUDING THE PROPOSALS SUBMITTED, AND LATER WITHDRAWN, BY SCI. FURTHER, NONE OF THE CLEARLY PROPRIETARY INFORMATION CONTAINED IN THE SCI PROPOSALS WAS NECESSARY TO THE PROPER PERFORMANCE OF THEIR CONTRACTS BY ANY OF THE FIRMS WHICH DID RECEIVE CONTRACTS. FINALLY THE WORK TO BE DONE; I.E; THE SPECIFIC SYSTEM TO BE EVALUATED BY EACH OF THE FIRMS, WAS CLEARLY DISTINGUISHABLE FROM AN ENGINEERING RESEARCH ASPECT FROM THE WORK PROPOSED BY SCI * * *".

WE HAVE BEEN ADVISED THAT AFTER INITIAL STUDIES OF A SAMPLE OF A TRANSMISSION LINE PROVIDED BY DR. GOUBAU, ESSA'S STUDIES WERE LIMITED TO A NEW DESIGN OF A SURFACE WAVE TRANSMISSION LINE. OUR OFFICE HAS BEEN FURNISHED WITH A TECHNICAL COMPARISON OF THE GOUBAU LINE AND ESSA'S SURFACE WAVE TRANSMISSION LINE AS BACK-UP FOR THE STATEMENT THAT ESSA'S STUDIES WERE LIMITED TO A NEW DESIGN. SINCE WE DO NOT HAVE THE TECHNICAL STAFF TO MAKE AN INDEPENDENT ENGINEERING EVALUATION, WE WILL ACCEPT THE ADMINISTRATIVE VIEW REGARDING THE EXTENT OF ESSA'S STUDIES. IN ANY EVENT THERE MAY WELL BE A QUESTION WHETHER ANY OF SCI'S DATA RELATING TO THE "G- LINE" WAS PROPRIETARY AS FAR AS INTERNAL USE BY THE GOVERNMENT IS CONCERNED.

AN ANALYSIS HAS BEEN SUBMITTED TO OUR OFFICE POINTING OUT VARIOUS TECHNICAL DIFFERENCES BETWEEN SCI'S PROPOSAL AND THE UNSOLICITED PROPOSALS RECEIVED FROM OTHER CONCERNS. THE CONCLUSION IS THAT THE UNSOLICITED PROPOSALS ARE TECHNICALLY DISTINGUISHABLE FROM THE PROPOSAL SUBMITTED BY SCI. WE ARE ALSO ADVISED THAT, IN ESSENCE, EACH OF THE UNSOLICITED PROPOSALS WAS UNIQUE IN CERTAIN RESPECTS; THAT THERE WAS INFORMATION IN EACH OF THE PROPOSALS WHICH WAS PROPRIETARY AND THAT THE AWARD ON EACH OF THE UNSOLICITED PROPOSALS WAS, IN EFFECT, A SEPARATE SOLE-SOURCE AWARD.

WE HAVE CAREFULLY REVIEWED THE RECORD AND WE FIND NO BASIS FOR QUESTIONING THE ADMINISTRATIVE VERSION OF THE FACTS. IN VIEW OF THE TECHNICAL NATURE OF THE ANALYSIS COMPARING THE UNSOLICITED PROPOSALS WITH SCI'S PROPOSAL, WE WILL ACCEPT THE ADMINISTRATIVE VERSION THAT THE UNSOLICITED PROPOSALS WERE TECHNICALLY DISTINGUISHABLE FROM SCI'S PROPOSAL.

WHILE THE TERM "G-LINE" MAY HAVE BEEN USED BY THE GOVERNMENT AS A SHORT- HAND TERM FOR THE PURPOSE OF IDENTIFYING THE COMMUNICATION LINE PROPOSED BY DR. GOUBAU, THERE IS NO SPECIFIC EVIDENCE THAT THE GOVERNMENT DELIBERATELY APPROPRIATED THIS TERM FOR ITS OWN USE OR THE USE OF A PRIVATE FIRM. ALSO, WE HAVE NO SPECIFIC EVIDENCE AS TO THE NATURE OF THE "CONFUSION" MENTIONED IN SCI'S STATEMENT OF SEPTEMBER 22, 1969. IN ANY EVENT IT IS DOUBTFUL IF THERE IS ANY REMEDY AGAINST THE GOVERNMENT FOR TRADEMARK INFRINGEMENT. PANATECH CORP. V. CARL ZEISS, INC; ET AL; 110 F. SUPP. 664 (S.D. N.Y. 1953). THE LETTER OF OCTOBER 28, 1969, HAS BEEN FORWARDED TO THE SECRETARY OF TRANSPORTATION FOR SUCH ACTION AS MAY BE APPROPRIATE.

PURSUANT TO OUR REVIEW WE HAVE NOT FOUND ANY SPECIFIC EVIDENCE WHICH WOULD SUPPORT SCI'S CONTENTIONS, ACCORDINGLY, SCI'S PROTEST IS DENIED.