*1 Concluding 1451(c). appellants in lack done This was that 42 U.S.C. § standing case, has we to sue in the The Administrator instant the instant case. redevelopment hold Court was correct approved that District the submitted granting including summary judgment proposed method plan pellees. Rede- local In the event the relocation. comply velopment Agency fail should Affirmed. any of the contract statutes, Adminis- federal relevant whatever to take
trator authorized necessary to effectuate action he deems Housing policies Act. 1456(c). thus seem It would
U.S.C. § process of parties who are in the that griev- may present their relocated Administrator,
ances, any, who if private protect the interests is able to CO., Inc., Plaintiff- OPTICAL FARRAND individuals. Appellant, re- and California law Both federal3 v. hearing public quire be there must America, STATES The UNITED plan redevelopment can Defendant-Appellant. hearings implemented. had were Such No. Docket 27333. appellants as had notice thereof appearance quired made Appeals law. No was States Court of by appellants Second Circuit. or those in behalf whom they attempt present sue to their Argued June 1962. grievances. protests, Rede- Absent Oct. Decided 1962. velopment Agency had to assume satisfactory pro- plan Rehearing in Banc Petition for On Agen- put operation. it in ceeded to cy Docket No. 27333. $2,000,000 expended has thus far over March 1963. carrying project. out the
There is a third check accorded parties. 33746 of
interested Section Safety California Code of Health party
provides that interested proposed redevelopment plan attack the days within 60 after state courts adopted.5 plan Appellants has been remedy. They pursue also failed they failing misléd in in
claim were
voke the California Conceding true, to be courts. resort predicated the federal court cannot be
thereon. day period expired 1455(d). Although this 60 5. signing of the contract be- to the Safety Code, § United States tween the velopment Agency, Re- Health 4. California redevelopment potentially Although more effec- City pro- presented judicial proceedings plan Coun- when tive than approval interests, private tecting cil of contained Oakland of those dis- hearings public plan holding relocation methods project required by placed subject 72 Harv. Sec- much criticism. See 33738 Code Safety, (1959); Health & Cal.L. 513-515 L.Rev. (1957). of California. 143-149 Rev. *2 Atty., Morgenthau, Robert M. U. S. Klings- (David Hyde, S.D.N.Y. R. David berg, Kushner, U. Robert S. E. Asst. Attys., defendant-appel- counsel), lant. CLARK, Before WATERMAN MOORE, Judges. Circuit
Waterman,
Judge,
Circuit
dissented.
Judge.
WATERMAN, Circuit
The Invention
Act of
U.S.C.
Com-
authorizes the
§§
grant
delay
missioner of Patents to
of a
on an invention the disclosure
might
of which
detrimental
security.
national
When
believes such
he
danger
exist,
the Commissioner
directed
patent
“make
in which such
dis-
invention is
inspection”
available for
closed
certain
designated
agencies
officials
request
the United States.
At
secrecy
may
of these officialsa
withholding
issue
long
for as
of time as
na-
requires.
tional interest
An inventor
has
whose
prevented
been so withheld is
from ex
ploiting
invention,
may
his
he
not dis
persons
long
close it to other
as the
Moreover,
order is in effect.
de
agencies
fense
United States to
whom, pursuant
has been disclosed
the Commissioner
Patents, may
it, prior
to the issu
patent,
ance of a
secure from
threat
infringement
of an
brought
action
against the United States under 28 v.
Gearon United
(1953),
inter depends, view, upon proper in our erly assumed provision issue. construction of the disclosure adjudging plaintiff In gives of 183 Act.1 entitled That § section * * * compensation “applicant under 35 whose is pertinent applicant, successors, assigns, 35 U.S.C. “An his legal as follows: representatives, 183 are or whose Right provided, “§ 183. herein withheld as have shall
§79
* *
*
phrase
provided”
“use of
the invention
withheld as herein
damage
sulting
“compensation
from his disclosure”
reason-
caused
ably
applicant’s
relate. The
is the
order of
first
and/or
Government,
result-
the invention
disclosure of
in his
the invention
* *
*
ing from his disclosure.”
application:
“the Commissioner
provides for
application
181 of the Act2
Section
shall make
to which the §
two kinds of disclosure
which such invention is disclosed avail-
ap-
right, beginning
department
at the date
the
plicant
the chief officer of
other
that, except
agency
designated
for such
notified
or
of the Government
order,
agency
in con-
otherwise
the President as a
February 1,
allowance,
dition for
the United States.
years
later,
ending
six
whichever is
applica-
“Each individual whom the
thereon, to
after a
is issued
sign
tion is disclosed shall
a dated ac-
any department
ply
head
knowledgment thereof, which acknowl-
agency
order to
issued
who caused the
edgment shall be entered in the file of the
damage caused
for the
application.
If,
the order of
and/or
Energy Commission,
Atomic
tary
the Secre-
Government,
use of the invention
*5
Department,
of a Defense
or the
right
resulting from
The
his disclosure.
department
chief officer of another
or
begin
shall
on the
for use
agency
designated,
publication
so
the
or
by
date of the first
of the invention
by
grant-
disclosure of the invention
the
The head
de-
Government.
ing
patent
of a
therefor would be detri-
partment
authorized,
agency
or
is
security,
mental
Atomic
tary
to the national
presentation
claim,
into
to enter
Energy Commission,
the Secre-
agreement
applicant,
an
his suc-
Department,
of a Defense
or such
cessors,
legal representatives,
assigns, or
notify
other chief officer shall
the Com-
damage
in full
for the
settlement
and/or
missioner and the Commissioner shall
agreement
use. This settlement
shall be
kept
order that
the invention be
secret
purposes
conclusive
ing any
all
for
notwithstand-
grant
and shall withhold the
of a
provision
other
of law to the con-
period
for such
as the national interest
trary.
If full settlement of
claim
requires,
notify
applicant
there-
effected,
cannot be
the head of
de-
Upon proper showing by
of.
the head
partment
agency may
pay
or
award and
department
agency
or
who caused
successors,
applicant,
assigns,
to such
his
secrecy
order to be issued that the
legal representatives,
or
ceeding
a sum not ex-
application might
examination of the
per
centum the sum which
jeopardize
interest,
the national
the Com-
department
agency
the head of the
or
thereupon
missioner shall
maintain the
just compensation
considers
dam-
application in a sealed condition and noti-
age
may bring
A
use.
claimant
and/or
fy
applicant
thereof. The owner of
against
suit
the United
States
application
placed
an
which has been
un-
Court of Claims or in the District Court
right
ader
order shall have a
of the United States for the district in
appeal
Secretary
from the order to the
which such claimant is a resident for an
prescribed by
of Commerce under rules
amount which when added to the award
him.
just compensation
shall constitute
kept
“An invention shall not be ordered
damage
use of the invention
and/or
by
with-
secret
held for
The Commissioner shall renew the order
at the end
the Government.”
year.
of more than one
provisions
pertinent
of 35
§
The
as follows:
181 are
thereof,
or at the
end
Secrecy of certain inventions
Ҥ
periods
period, for
renewal
additional
of
of
withholding
year upon
one
notification
head
*
*
«
*
(cid:127)
department or
chief
the
agency
officer of the
publication
or
who caused
“Whenever the
disclosure
to be issued
granting of
of an invention
affirmative determination has been
patent,
in which the Government does
made that
the national
interest con-
property interest,
require.
might,
effect,
so to
An order in
have a
tinues
Commissioner,
during
issued,
be detri-
a time when the United
war,
security,
to the national
he shall
is at
shall remain in
mental
States
effect
application
duration
make the
of hostilities and one
year
following
disclosed available for
cessation of
is
hostilities.
Energy
issued,
inspection
effect,
to the Atomic
Com-
An order
Secretary
Defense,
emergency
mission,
national
declared
Pres-
* *
subsequent
ed, quite incidentally,
disclo-
is the
The second
able
Patents of
order.
the Commissioner
sure
to officers
filed
legislative
history
The
of the Act
agencies:
designated
“Each in-
meager
light
so
on the
that it casts little
application is dis-
to whom the
Congress.
dividual
present
true intent of
statute,
acknowledgment
sign
shall
a dated
closed
enacted
U.S.C. §§
* *
sections
thereof
two
July 19, 1952,
substantially
identical to
therefore,
provide
together,
read
be
special
predecessor,
35 U.
former
Stat.
pat-
whose
relief for an inventor
151-159. Both
differ
statutes
§§
S.C.
only
whose
ent has been withheld and
significantly
provision
from the earlier
of his dis-
subject matter,
control
the fruits
other
covery,
over
dealing
the same
unpatent-
to disclose
July 1, 1940, 54
and its
Stat.
act of
users,
potential
has been
ed invention to
predecessor
statute, an act of October
preempted
Pat-
Commissioner
Throughout
for-
40 Stat. 394.
of 181.
ents
ty-five year
only
history,
one statement
together in this
If the sections are read
clearly
Congressional
appears
intent
way the
Government’s
report
relevant
issue. The
unauthorised
of the invention
Patents,
House Committee
H.R.
directly
provided
resulted
must have
Cong.
(1917)
No.
65th
1st Sess.
stat-
steps
from the
leading
order and the
ed:
181 of
to its issuance under
provides
“The bill
also
com-
Act.
pensation to an inventor whose de-
vice or invention is taken over
However,
possible
this is not the
*6
pre-
the Government and he is thus
reading
plaintiff
of
Act.
ear-
the
having
vented from
the benefits
nestly contends, and
court below
the
might
which otherwise he
de-
have
held,
speaks
that
inasmuch as the Act
1)
(at p.
rived from his invention.”
Government,
of use
the
and not
3
Early interpretations
specifically
use,
of
Act
unauthorized
it can
1917
be
broadly
interpreted
enough
the Court of Claims reflect fundamen
to cover cas-
disagreement concerning
es,
present,
compensation tal
like the
where
the intent
Congress.
sought
of
States,
In
Zeidler
is
for
use
v. United
Government
(1926),
express
implied license,
denied,
4. [W]here the Government uses a v. Bethlehem United States Steel 321, 327, ed invention the consent and ex- 258 U.S. S.Ct. permission press owner, (1922). of the and does 66 L.Ed.639 “repudiate owner,” title of implied pay contract a to reasonable compensation usage for such rises. patent application, but made secret exclusive then within case of Claims jurisdiction except the Com- was court which of the latter avail- on, missioner of make it or Patents must pending court in a district inspection by able for agencies September 13, the several brought after, to It is limited, named in the statute. court judgment particularly noted that this remanded and the case reversed mandatory crucial, but on disclosure is to be transferred instructions that it part and flows the Commissioner 28 U.S.C. Court of Claims automatically imposition from the 1406(c). patent. are order on the There qualifications no because limitations Judge (dissenting). CLARK, Circuit knowledge negotia- prior or contract pre- appear fall ease would This tions or the like. cisely of 35 U.S.C. § within the terms opinion, supra my my 1 of the Here in view —quoted in note is where brothers wrong broadly turning. They ap- statute which have made remedial —a parently adopt for district a sort of basis man-in-the- contrary interpretation My reach street brothers of disclosure as not here. by interpolating possible something already into the statute sult through and which is phrase not there known negotiations. which is to the disclosee By in- actually quite inappropriate. But this overlooks the they opera- statutory making terpolation would limit scheme this a word of compensation defining mandatory of the statute art and act government government’s unauthorized use of the secret depend. order. covered invention must Hence in the present ease, for authorized use of plain- So deals not with (found government to be situation tiff’s such a own sales to the —ad- only entirely here) mittedly out- amply paid be obtained it has been for those by an action in the Court the statute side that account closed-—but with use ordinary government course. I invention, shall of Claims behest, at inappropriateness of below the discuss sights produced the additional bomb gratuitous embellishment on a self- this by the Company, Eastman Kodak consequent drastic statute and contained wholly rests operation. But of its field of limitation statutory disclosure. As the statute point more I out its natural first wish abundantly clear, makes dis- operation case under as illustrated closure which can be had once se- Judge interpretation of Chief the sound Ryan crecy order is entered is that which the F.Supp. below, D.C.S.D.N.Y., defines; prior negotiations, statute Id., D.C., 197 any, superseded by merged if operation that disclosure. So here simply the Eastman natural That actually produced bomb were un- ply of the ease the the conceded facts der claim which was claim 32 as it is Under 35 written. statute patent application. process This was the is to be settled 183 what award, stipulation parties set of administrative there out exact *9 government by necessary Moreover, action, if court in ad- followed trial. appropriate patent claim, or an under this and the Court Claims mitted use accordingly. court, is to the in- found Farrand district the court States, by Optical for the use of the invention United Co. v. D.C.S.D. ventor “resulting 233; F.Supp. 230, Id., D.C., government N.Y., from his disclo- 175 only F.Supp. 758. This “Disclosure” is defined in 35 197 sure.” U.S. legal substantially upon quoted in claim for com- note 2 basis C. § 181— government clearly opinion (as pensation be made for means can —and by secrecy states) the disclosure covered use by admission, order; stipulation, initially the inventor in his and this Halpern finding, submit, I case did As the not do so. completely^dispose n found, jurisdictional plaintiff’s royalty-free issue. government expired license to the heavy given phrase bur- Now the long March before the 1946— upsetting natural result den of February 23, 1949, order of de and the my brothers, “unauthorized use govern liveries of bomb to the government,” inept in seem would plaintiff Eastman, ment both de- event. know a rich bonanza We what which occurred from 1950 to 1960. D.C. corporations, fense work tois business S.D.N.Y., F.Supp. 238; Id., page at great small; at can “unauthorized” D.C., pages at 771- only most refer few concerns those 772; Moreover, the contract does not yet oppor- which have not had defense crucial, cover the matter namely, here negotiate tunities and the chance to gov as disclosed therefor. So to 183 in this restrict § party, ernment to wit, a third East fashion is to leave to a de- that statute man, proper compensation for cidedly operation in limited field of wholly such use. It seems obvious that practice. actually phrase But cannot actually solve the issues now before us appropriate all, at all makes resort can be had authorized, once Act, Invention and there the wheels are set the in- motion nothing supply the contract to voluntary ventor’s disclosure of a defense gap.* premise upon Hence the patent application, invention in his fol- my brothers entirely build their case is Actually lowed order. inadequate, simpler while interpreta my undoubtedly what brothers mean is tion of the employed gives statute below government an invention disclosed to the complete justification negotiation or contract before ever holding. court’s the defined, order is entered. re- As thus problem acquires understand- Thus, already Ias indicated, have form; able but the of the in- difficulties decision herein seems contrary to me terpretation also For become obvious. point substantial holding to our in Hal- question the troublesome arises how pern v. States, supra, Cir., by way negotiation much or contract naught F.2d 36. It policy also sets at necessary opera- to oust the statute of Congressional stressed in debates and tion. Thus it is to be noted that in Hal- emphasized Halpern case and the pern States, Cir., v. United 258 F.2d earlier case of Robinson v. United “approached the inventor the Of- Cir., affording 236 F.2d inventors fice of Develop- Scientific and Research merely incentive of not the adminis- explained ment and prin- the scientific remedy delayed trative ciples of his invention.” The actual con- statute, limitation of the but also the exploitation tract was then made with presence of a court close at hand Laboratory Radiation .the of the Massa- dress if court necessary. action becomes Technology. chusetts Institute of Nev- I can see no functional reason for the dis- ertheless, contrary here, to the result we tinction in remedy available now devel- upheld jurisdiction. the district court’s oped by my argument Every brothers. plaintiff While this did have a contract district court review in the case government, it is prior negotia- difficult to where there see has been no how that can function to op apply tion would perhaps exclude the seem to even negotiations strongly eration of 183 if the more where there has been some * government special statutory analysis pre- made a attack But if the here correct, *10 the of the court to ad- sented is all these deliveries re- judicate compensation possible by for the bomb sulted from and were made lifting delivered Eastman after the of the disclosure to 35 U.S.O. § the order on December and until institution of in action present dis- contract negotiation, nevertheless inventors followed may place compulsion Only stat- serious the pute. the restrictions stern of upon us. their future use of their government distinction inventions force ute should the beyond even yet not itself does will control the statute And statutory distinction, the of from its back- terms hint but extensive at the grant? strongly language persuades Perhaps ground for both the the moral government can distinction. One is that the inventor absence only suggest judicial indulge negotiations again rewrit- neither should in as activity ing Congressional potential inventions, acts is an defense for both fraught peril. will retain more indeed freedom for ac- effective they tion if deal other with each to in adverted Other considerations length! at arm’s These some of the makeweights conclu- problems which a strained and unnatural main me in the Admittedly to cut seem to sion piling up construction statutes legislative way. other history They for our future harassment. also my gives support decisive no suggest quite the need for a different change holding. But the brothers’ problem statutory attack on the inter- omitting requirement act, pretation. voluntary his invention tender of It is unfortunate that herculean substituting applicant parties judge labors of the bring law, mandatory present features of the completion, this case to as dis- Congressional pur- making far particularly Ryan’s Judge closed sec- my pose in brothers’ conclusion favor of opinion, ond D.C.S.D.N.Y., 197 surely doubt,” quite “too clear for does 756, are now to be into thrown the dis- contrary. mandatory fea- For the card because of this resolution of adverse statute tures are the basis preliminary jurisdiction. issue It my controlling this is a view that judicial would have seemed to me better governmental mandate based fundamen- economy, thought in case a doubt was tally sovereign government’s pow- on the exist, to have presumptions resolved all er eminent to take domain whatever it jurisdiction. in favor of But in taken, safety view of public need for and defense. the turn the case has now it would special provisions giving And the six- be futile for me to discuss the issues on year period pro- of limitation after merits, the doing and I shall refrain from cedures for administrative award have myself I so. content with record- completed been show how different this ing my upholding vote favor of ordinary patent infringement from the jurisdiction of the district court. say I claim. venture to had sought compensation owner for either CLARK, WATERMAN, Before negotiated unnegotiated use within MOORE, FRIENDLY, SMITH, KAUF- by 181, allowed but after MAN, MARSHALL, HAYS and Circuit ordinary infringement barred, suit was Judges. say we would indeed hesitate to that his remedy gone Rehearing by case, though in one On Court Banc. in the other. PER CURIAM. necessarily While our di- discussion jurisdiction original rected to the us, majority issue After a problem may panel have more extensive heard this case held that had jurisdic ramifications. The Invention district court was without broadly seeking petition Act is in terms worded tion a was filed to have coverage gives government major A this issue reheard in banc. ity judges means to make extensive use in times of active voted peril rehearing, inventions, petition. of new of course limited making adequate payments solely question dis inven- whether the my argument properly Does
tors.
mean
took
brothers’
trict
*11
judges,
arguments
hearing
ease,
unless a
oral
rehear-
was had on
ing
January 16,
or-
court in banc is
on
and briefs
by majority
dered
a
judges
ex-
participating
circuit
all the active
judges
Lumbard,
Judge
cept
who
circuit who are in ac-
Chief
previous con-
tive service. A
in banc shall
disqualified
a
court
because of
judges
consist of all
service
active
circuit
case
nection with the
Attorney.
circuit.”
The deci-
as United States
uphold-
below
district court
sion of the
It is
obvious that
when court of
D.C.S.D.N.Y.,
ing
jurisdiction,
its
peals
in
panel
case determined
F.Supp.
grants
rehearing
case
before the
equally
is affirmed
to that issue
sitting
banc,
court
in
full bench
Clark, Friendly,
court, Judges
divided
judges supplants
panel,
its
e.,
i.
voting
af-
Smith,
Marshall
judges,
“court or division” of three
that
Moore,
Judges Waterman,
firmance, first
heard
determined the contro-
voting
Hays
Kaufman,
reverse versy.
agree
my colleagues
ISo
of the action
and remand for transfer
that an in banc court does not sit as an
of Claims. See
States Court
appellate court of review over
own
Incorporated Local
Drake Bakeries
v.
panels.
so,
If such were
the result
Confectionery
Bakery
Work-
American
panel
reached here
would not have
AFL-CIO, Cir.,
International,
ers
been disturbed.
370 U.S.
F.2d
affirmed
However,
equally
it seems
obvious to
1346,