Petition — Sears v. Dann

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Suteme Court, U. &

FILED

OCTOBER TERM, 1975

No. 79-984

MARY HELEN SEARS,

Petitioner,

V.

ROBERT GOTTSCHALK, Commissioner of Patents,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

EDWARD S. IRONS

1801 K Street, N.W.

Washington, D.C. 20006

296-8855

Attorney for Petitioner

WILSON - EPES PRINTING Co.. INC. - RE 7-6002 - WASHINGTON, D. C. 20001

TABLE OF CONTENTS

The Opinions Below _

Statutes and Patent Office Rules Involved

Questions Presented

Statement of the Case...

Reasons Why the Writ Should be Granted _..._

Conclusion

Page

~ *©& DW PO

TABLE OF AUTHORITIES

Cases: Page

Administrator, FAA Vv. Robertson, 422 U.S. 255

(1975) 4, 5, 9, 10, 13, 14, 15, 16

Altoona Publix Theatres Vv. American Tri-Ergon

Sf Sg 8: ee 8

Becton, Dickinson & Co. Vv. Sherwood Medical In-

dustries, Inc., 516 F.2d 514 (5 Cir. 1975) —.__ 8

Blonder-Tongue Labs. v. Univ. of Ill. Foundation,

402 U.S. 313 (1971) haeaba ” 17

Brown V. Davis, 116 U.S. 237 (1886) — 7

Brown V. Guild, 90 U.S. 181 (1874) __ 7

Butcher & Sherrerd v. Welsh, 206 F.2d 259 (3 Cir.

1953), cert. den. 346 U.S. 926 ___.....___._____. 11,12

Carrier Mfg. Co. V. Rex Chainbelt, Inc., 281 F.

Supp. 717 (E.D. Wisc. 1968) 8

James B. Clow & Sons, Inc. v. United States Pipe

& Foundry Co., 313 F.2d 46 (2 Cir. 1963)... 8

Del Mar Engineering Labs v. United States, 187

U.S.P.Q. 656 (Ct. Cls. 1975) 8

Geuder, Paeschke & Frey Co. Vv. Clark, 288 F. 2d

1 (7 Cir. 1961), cert. den. 368 U.S. 826 (1961) — 11

Graham V. John Deere Co., 383 U.S. 1 (1966) 8,17

Hartman V. Lauchli, 304 F.2d 431 (8 Cir. 1962) _ 11

S. C. Johnson & Son V. Johnson, 175 F.2d 176 (2

SELES: EN miele 11

Kewanee Oil Co. Vv. Bicron Corp., 416 U.S. 470

a ae ll Dl 8,17

Krock v. Electric Motor & Repair Co., 339 F.2d

a I scestuenedinienianeniiiiagle 11

NLRB v. Sears, Roebuck & Co., 421 U.S. 132

EE a ee a ae ee a 15

Package Devices, Inc. v. Sun Ray Drug Co., 301 F.

Supp. 768 (E.D. Pa. 1969), aff'd 432 F.2d 272

I NO alata lett ect ciains 8

Perlman Vv. 322 West Seventy-Second St. Co., 127

F.2d 716 (2 Cir. 1942) __.._._ cada 11

Schildhaus Vv. Moe, 335 F. 2d 529 (1964) _ 11

Sears V. Gottschalk, 357 F. Supp. 1327, aff'd 502

F.2d 122 (4 Cir. 1974) 4

pane

TABLE OF AUTHORITIES—Continued

Page

Smith v. Alleghany Corp., 394 F.2d 381 (2 Cir.

— 11

Smith v. Hall, 301 U.S. 216 (1937)

Tribble v. Rruin, 279 F.2d 424 (1960) 11

Von Wedel v. McGrath, 100 F. Supp. 434, aff’d 194

F.2d 1013 (3 Cir. 1952) 12

Wilkin v. Sunbeam Corp., 405 F.2d 165 (10 Cir.

1968) c 10

Wilson Research Corp. Vv. Piolite Research Corp., *

336 F.2d 303 (1 Cir. 1964) . ’ 11

Yale Lock Mfg. Co. v. Greenleaf, 117 U. Ss. 554

(1886) 8

Constitutional and Statutory Provisions; Rules and

Related Material:

United States Code

5 U.S.C. §552(a) (3) — 2,14

§ 552(b) (3) _ 2,5

28 U.S.C. § 1254(1) 2

35 U.S.C. § 103 a 3, 4, 7, 16

SRE RE arieeeer 3, 4, 18, 14, 15, 16

§ 131 3, 4, 7, 16

§ 282 i 4

FAA Act, § 1104 rn - 5, 13, 14

Rule 60 (b)—Federal Rules of Civil Procedure__4, 5. 7, 8,

10, 13, 16

Marquis, “Improving Quality Control for Patents,”

Minn. L. Rev. 59, 67 (1974) _ Saati etitniieie 16

7 Moore’s Federal Practice 60.30[2] p. 341 13

Wright & Miller, Vol. 11, § 2878, p. 267-9. --ss:«412, 18

us

IN THE

Supreme Court of the United States

OCTOBER TERM, 1975

No.

MARY HELEN SEARS,

Petitioner,

Vv.

ROBERT GOTTSCHALK, Commissioner of Patents,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

Petitioner prays that a writ of certiorari issue to re-

view the judgment and opinion of the United States

Court of Appeals for the Fourth Circuit entered in

this proceeding on December 15, 1975.

THE OPINIONS BELOW

The opinion of the district court is unreported and

is reproduced in Appendix A, infra, p. la. The opinion

of the court of appeals is unreported and is reproduced

in Appendix A, infra, p. 2a.

2

JURISDICTION

The opinion of the Court of Appeals for the Fourth

Circuit was filed on December 15, 1975. This petition

for writ of certiorari was filed within 90 days of that

date. The jurisdiction of this Court is invoked under

28 U.S.C. § 1254(1).

STATUTES AND PATENT OFFICE

RULES INVOLVED

5 U.S.C. § 552(a) (3) and (b) (3):

“Section 552. Public Information; agency rules,

opinions, orders, records and proceedings.

“(a) Each agency shall make available to the

public information as follows:

“(3) Except with respect to the records made

available under paragraphs (1) and (2) of this sub-

section, each agency, upon any request for records

which (A) reasonably describes such records and

(B) is made in accordance with published rules stat-

ing the time, place, fees (if any), and procedures

to be followed, shall make the records promptly avail-

able to any person.

“(b) This section does not apply to matters that

are—

“(3) specifically exempted from disclosure by

statute.”

Section 552 was amended by the 1974 Amendments

to the FOIA Act, Pub.L. 93-502, 88 Stat. 1561. Prior

to the amendments, § 552(a) (3) read, in pertinent part:

“Except with respect to the records made available

under paragraphs (1) and (2) of this subsection,

each agency, on request for identifiable records made

in accordance with published rules stating the time,

place, fees to the extent authorized by statute, and

procedure to be followed, shall make the records

promptly available to any person... .”

The amendments did not affect exemption 3 of the

Act, 5 U.S.C. § 552(b) (3) [5 USC § 552(b) (3) ].

35 U.S.C. § 103:

“Conditions for patentability; non-obvious subject

matter

A patent may not be obtained though the inter-

vention is not identically disclosed or described as

set forth in section 102 of this title, if the differ-

ences between the subject matter sought to be pat-

ented and the prior art are such that the subject

matter as a whole would have been obvious at the

time the invention was made to a person having or-

dinary skill in the art to which said subject matter

pertains. Patentability shall not be negatived by the

manner in which the invention was made.” .

35 U.S.C. § 122:

“Confidential status of applications

Applications for patents shall be kept in confi-

dence by the Patent Office and no information con-

cerning the same given without authority of the

applicant or owner unless necessary to carry out the

provisions of any Act of Congress or in such special

circumstances as may be determined by the Com-

missioner.”

35 U.S.C. § 1381:

“Examination of application

The Commissioner shall cause an examination to

be made of the application and the alleged new in-

vention; and if on such examination it appears that

.

d

the applicant is entitled to a patent under the law,

the Commissioner shall issue a patent therefor.”

35 U.S.C. § 282:

“Presumptior of validity; defenses

“A patent shall be presumed valid... .”

QUESTIONS PRESENTED

1. Is appellate leave required to vest jurisdiction in

the district court to consider a motion under Rule 60(b)

for relief from the judgment after the court of appeals

has finished with the case?

2. Under the rule in Administrator, FAA v. Robert-

son, 422 U.S. 255 (1975) which requires the Freedom

of Information Act (FOIA) and the various statutes

restricting disclosure to be construed, whenever possible,

so as “to regard each as effective”, must 35 U.S.C. § 122

be so construed that “applications necessary to carry out

the provisions of any Act of Congress” are subject to the

mandatory disclosure provisions of the FOIA?

3. Is unpublished evidence properly considered on the

issue of patentability under 35 U.S.C. §103 as is the

practice in the federal courts or is such unpublished

evidence properly ignored in accordance with the prac-

tice of the Patent Office in examining pending patent

applications under 35 U.S.C. § 131?

STATEMENT OF THE CASE

This is a Freedom of Information Act (FOIA) case.

The original judgment in this case was filed April 16,

1973. See Sears v. Gottschalk, 357 F.Supp. 1327. The

Fourth Circuit affirmed on August 14, 1974, 502 F.2d

122. A petition for writ of certiorari, No. 74-584, was

timely filed and pended in this Court concurrently with

5

the petition in No. 74-450, Administrator, FAA v. Robert-

son. The petition in No. 74-450 presented a single broad

question as to the scope of exemption 3 [5 USC § 552

(b) (3)] of the FOIA. The petition in this case, No.

74-584, presented an identical question “1” plus addi-

tional questions which the petition in No. 74-450 did not

raise.

The certiorari petition in No. 74-450 was granted on

December 19, 1974, 419 U.S. 1067. Various motions for

briefing and argument of No. 74-584 in tandem with

No. 74-450 were denied. Robertson was decided on June

24, 1975, 422 U.S. 255. On June 30, 1975, the petition

in No. 74-584 was denied —— U.S. ——, 45 L.Ed.2d

709.

A timely petition for rehearing was filed emphasiz-

ing that the decision of the Court of Appeals in this

case is in conflict with this Court’s ruling in Robertson.

The rehearing petition was denied on October 6, 1975,

— US. ——, 46 L.Ed.2d 116.

On October 28, 1975, petitioner filed a “Motion Pur-

suant to Rule 60(b) (6) for Relief From Judgment” in

the district court. The motion urges that the decisions

of the district court and of the court of appeals in this

case are in conflict with the law as explicated by this

Court in Robertson and hence that the judgment should

be vacated. The motion specifically emphasizes that, in

Robertson this Court determined that the FOIA and

§ 1104 of the FAA Act are “capable of coexistence” and

that the courts are therefore under a “duty . . . to regard

each as effective”. 422 U.S. 255, 257, 45 L.Ed.2d 170,

173.

The petitioners’ Rule 60(b) (6) motion points out that

the decision of the district court in this case—as affirmed

on appeal:

“ . . fails to give effect to important parts of both

the FOIA and 35 U.S.C. § 122, notwithstanding the

fact that these two statutes are clearly capable of

coexistence. Instead of discharging the courts’ ‘duty

. . . to regard each as effective’, [the] judgment

holds that exemption 3 repeals by implication that

provision of § 122 that mandates public availability

of ‘applications for patents’ that are ‘necessary to

carry out the provisions of any act of Congress’.

“2. One of the ‘two aspects’ of the FOIA ‘seeks

to open public records to greater public access’,’

while ‘the other . . . seeks to preserve the confiden-

tiality undeniably essential in certain areas of Gov-

ernment operations’.* Robertson supra 45 L.Ed.2d

at 170-171.

“Section 122 has two like aspects. In one, it seeks

to open to the public those patent applications as to

which exclusion from ‘confidence’ is ‘necessary to

carry out any Act of Congress’; in the other, it

seeks to preserve in confidence all applications not

so ‘necessary’ and as to which the Commissioner has

not determined that ‘special circumstances’ warrant

disclosure. : nl

“The disclosure aspect of § 122 is concerned with

those applications ‘necessary to carry out the provi-

sions of any Act of Congress’. The applications in

this category are expressly excluded from its ‘confi-

dence provisions’ by § 122’s own terms. ‘The wisdom

of the balance struck by Congress is not open to

judicial scrutiny.’ Robertson, supra, 45 L.Ed.2d at

174.

“These records, accordingly, cannot be subjected

to exemption 3. Instead, the disclosure provisions of

“2 Te, the disclosure provisions of § 552(a).

“3T.e., by the ‘nine explicitly exclusive exemptions’, 45

L.Ed.2d at 171.”

ee, Qe

7

the FOIA, § 552(a), apply directly to require that

all such applications be ‘produced on demand’.

NLRB v. Sears, Roebuck & Co., 421 U.S. 182, 44

L.Ed.2¢ 29, 45 (1975). (Footnote omitted)

“, . . [B]oth aspects of § 122 and both aspects of

the FOIA are clearly ‘capable of coexistence’.

“Specifically, the nondisclosure, or exemption 3,

aspect of the FOIA, applies only to those applica-

tions which § 122 gives the Commissioner discretion

not to disclose, whereas the disclosure aspect of the

FOIA, § 552(a), applies to ‘necessary applications’

as to which the Commissioner has no such discretion’.

The petitioner’s Rule 60(b) (6) motion further dem-

onstrates that the requested records are “necessary to

carry out the provisions of any Act of Congress’”—for

example the application by the Patent Office and the

courts of the constitutional patentability standard pur-

suant to 35 U.S.C. § 103. Consideration of the evidence

contained in these records is “necessary” to the Com-

missioner’s discharge of his duty under 35 U.S.C. § 131

to “cause an examination to be made of the application

and the alleged new invention; and if on such examina-

tion it appears that the applicant is entitled to a patent

under the law, the Commissioner shall issue a patent

therefor.”

The Rule 60(b) (6) motion also points out that where-

as nonpublic evidence—including but not limited to aban-

doned patent applications—is routinely considered on

the issues of patentability in the federal courts, the

Patent Office flatly refuses to consider such evidence.

1 Citing as to abandoned patent applications Brown v. Guild, 90

U.S. 181 (1874) (abandoned applications have a bearing on the

question of invention or discovery and hence are properly included

in “the whole of the evidence” germane to patent validity) ; Brown

v. Davis, 116 U.S. 237 (1886); Yale Lock Mfg. Co. v. Greenleaf,

8

Thus the Patent Office disclaims the admonition in

Graham v. John Deere Co., 383 U.S. 1 (1966) that the

Commissioner shall “adhere strictly to the 1952 act

as interpreted here”, 383 U.S. at 18. —and su perpetuates

the dichotomy between administrative and judicial patent-

ability standards which this Court has twice condemned.

Graham, supra 383 U.S. at 18-19; Kewanee Oil Co. v.

Bicron Corp., 416 U.S. 470 (1974).

On November 14, 1975, the district court denied the

Rule 60(b) (6) motion stating

“T don’t think I have jurisdiction; I think it’s im-

properly filed. I’ll dismiss it for that reason.” (App.

la)

On December 1, 1975, petitioner filed in the Fourth

Circuit Court of Appeals a “Petition to Permit the

District Court to consider Motion Pursuant to Rule

60(b) (6),” noting, inter alia

“There is a conflict in the circuits as to whether

appellate leave is required before the District Court

117 U.S. 554 (1886); Altoona Publix Theatres v. American Tri-

Ergon Corp., 294 1'.S. 477, 484 (1935) ; Smith v. Hall, 301 U.S. 216

(1937) (unpublished abandoned patent application “is competent

and cogent evidence to determine the nature and date of the in-

vention”). Package Devices, Inc. v. Sun Ray Drug Co., 301 F. Supp.

768 (E.D. Pa. 1969), aff’d 432 F.2d 272 (3 Cir. 1970); James B.

Clow & Sons, Inc. v. United States Pipe & Foundry Co., 313 F.2d

46 (5 Cir. 1963) (abandoned application necessary to carry out the

provisions of the patent laws—“Congress made the public interest

dominant in requiring that a patent issue only to the first in-

ventor in fact. ... In this connection, the [abandoned] application

of Mathieu should be produced if it becomes relevant on remand... .

Neither . . . §122 nor the rules of the Patent Office promulgated

thereunder requiring patent applications to be maintained in confi-

dence . . . may be used to prevent the truth from coming to

light .. .” 313 F.2d 46, 51); and Carrier Mfg. Co. v. Rex Chuain-

belt, Inc., 281 F. Supp. 717 (E.D. Wis. 1968), and as to other forms

of nonpublic evidence Becton, Dickinson & Co. v. Sherwood Medical

Industries, Inc., 516 F.2d 514 (5 Cir. 1975) and Del Mar Engineer-

ing Labs. v. U. S., 187 U.S.P.Q. 656 (Ct. Cls. 1975).

9

may consider a motion under Rule 60(b) (6) after

the Court of Appeals has finished with the case. See

generally, Wright and Miller, Federal Practice and

Procedure, Vol. 11, Section 2873, pp. 266-270.

“While such a requirement does appear to read

into Rule 60(b) (6) a provision which the rules does

not contain, it is also apparent that this Court may

be included among those tribunals which require

such leave. See, e.g. Tribble v. Bruin, 279 F.2d 424

(1960). Compare Wilkin v. Sunbeam Corp., 405 F.

2d 165, 166 (10 Cir. 1968).”

Respondent opposed contending that this Court’s de-

cision in Robertson rendered petitioner’s contentions

“patently frivolous’—and so placed squarely in issue

the conflict in decision which in fact exists between the

rule in Robertson and the lower court decisions in this

case. The opposition states:

“In its decision of August 14, 1974, this [Fourth

Circuit] Court, although not accepting the Govern-

ment’s broad construction of exemption 3 of the

Freedom of Information Act, 5 U.S.C. 552(b) (3),

held that, nevertheless, the abandoned patent appli-

cations sought by the Appellant were exempt from

disclosure under exemption 3. Subsequently, in Ad-

ministrator Vv. Robertson, 422 U.S. 255 (1975), the

Supreme Court accepted the Government’s construc-

tion of exemption 3 and held that all nondisclosure

statutes are covered by that exemption. Since the

Supreme Court gave a broader reading to exemption

3 then did this Court, the materials sought by the

Appellant are, a fortiori, covered by exemption 3.

“Significantly, the Appellant’s petition for certio-

rari in this case was pending before the Supreme

Court at the time it had Robertson under considera-

tion. On June 30, 1975, six days after its decision

in Robertson, the Supreme Court denied certiorari

in this case. The Appellants thereafter filed a peti-

10

tion for rehearing with the Supreme Court and that

was also denied.

“Under these circumstances, the Appellant’s con-

tention that the abandoned patent applications are

not covered by exemption 3 is patently frivolous.

Accordingly, this Court should deny the Appellant’s

petition to permit the filing of a Rule -60(b) (6)

motion.”

On December 15, 1975, the court of appeals filed a

summary order stating:

“Upon consideration of the plaintiff’s motion to per-

mit the district court to consider a motion pursuant

to Rule 60(b) (6), by Counsel.

“IT IS ORDERED that the motion is denied.”

(App. 2a).

Petitioner is thus faced with a summary refusal to

permit the district court even to consider whether its

decision conflicts with the subsequent ruling of this

Supreme Court in Robertson.

It is the very purpose of Rule 60(b) to prevent just

such an inequitable result.

REASONS WHY THE WRIT SHOULD BE GRANTED

1. Decisions of the courts of appeal are in hopeless

confusion on the question of whether appellate leave is

required before the district court may consider a motion

under Rule 60(b) after a court of appeals has finished

with the case.

In the most recent reported opinion, the Tenth Circuit

has held that appellate leave is not required. Wilkin

v. Sunbeam Corp., 405 F.2d 165, 166 (10 Cir. 1968).

11

The Tenth Circuit decision is in conflict with de-

cisions from other circuits, including the Third, Fourth,

Seventh and Eighth.’

In the Second Circuit, early opinions of Judge Clark,

a draftsman of the rules, pointed out that the rules

did not require appellate permission for the district court

to consider the case, and held acordingly that the district

court could act without permission. See Perlman v.

3822 West Seventy-Second St. Co., 127 F.2d 716, 719

(2 Cir. 1942) and S. C. Johnson & Son v. Johnson, 175

F.2d 176, 177 (dissenting opinion) (2 Cir. 1949).

In 1964, the Second Circuit found it “unnecessary

to consider appellant’s further contention that our affirm-

ance of the judgment precluded the District Court from

taking action under that Rule [60(b)] without first

obtaining leave from this Court”—albeit recognizing the

conflict in decision which had developed in the interim.

Schildhaus v. Moe, 335 F.2d 529 (1964).*

In 1968, in Smith v. Alleghany Corp., 394 F.2d 381,

388, the Second Circuit stated that:

“.. . It is the rule in most circuits that where the

action which the district court is asked to take under

Rule 60(b) would disturb the judgment ordered by

the appellate court’s mandate, the district court lacks

power to proceed until leave is obtained. 7 Moore,

Federal Practice J 60.30 [2]. This court has not yet

2 See Krock v. Electric Motor & Repair Co., 339 F.2d 738 (1 Cir.

1964) ; Wilson Research Corp. Vv. Piolite Plastics Corp., 336 F.2d 303

(1 Cir. 1964); Butcher & Sherrerd v. Welsh, 206 F.2d 259 (3 Cir.

1953), cert. den. 346 U.S. 925; Tribble v. Bruin, 279 F.2d 424

(1960) ; Geuder Paeschke & Frey Co. v. Clark, 288 F.2d 1 (7 Cir.

1961), cert. den. 368 U.S. 826 (1961); Hartman v. Lauchli, 304

F.2d 431 (8 Cir. 1962).

’“Compare Judge Clark’s views [in Perlman and S.C. Johnson

& Son, supra] with the contrary decisions in [Butcher & Sherrerd,

Tribble, Geuder, Paeschke & Frey Co. and Hartman, supra].” 335

F.2d at 531.

12

decided whether the rule should be established in

this circuit—Judge Clark was very strongly of the

view that it should not. See generally Judge Friend-

ly’s opinion in Schildhaus v. Moe, 335 F.2d 529, 530

(2 Cir. 1964). We need not resolve the question

here in view of our determination on the merits.”

In the Third Circuit, it was initially the rule that

appellate leave is not required. Von Wedel v. McGrath,

100 F.Supp. 434, aff'd 194 F.2d 1013 (3 Cir. 1952).

However, in 1953, the Third Circuit in Butcher &

Sherrerd, supra was presented with an aggravated case.

« . . It involved a persistent litigant who had pre-

viously been before the court of appeals four times,

and who had 14 times sought review in the Supreme

Court by means of petitions for certiorari, motions

for rehearings of denials of certiorari, and applica-

tions for leave to file yet more motions for rehear-

ing. Ultimately his persistence was rewarded when

a district judge granted his motion under Rule 60

(b) to reopen the judgment.

The appellate court responded decisively. It hand-

ed down a striking opinion, loaded with quotable

epigrams, in which it announced that a district

judge lacks jurisdiction to grant a Rule 60(b) mo-

tion reopening a judgment that has been affirmed

on appeal unless the appellate court has first given

leave. It granted writs of prohibition and manda-

mus requiring the district judge to vacate his order

allowing a new trial.

The decision just described has attracted a con-

siderable following as other courts have held that

appellate leave is required, . . .”* (Footnotes omit-

ted). Wright & Miller, Vol. 11, § 2873, p. 267-8.

The conflict rages even among the text writers. The

requirement of appellate leave which some circuits have

* Such “following” includes the cases cited in note 2, supra.

13

read into Rule 60(b) has been criticized because it “in-

troduces into an attempted simplification of the practice

for reopening judgments a useless and delaying formal-

ism”. Wright and Miller, supra at 269.

On the other hand Professor Moore suggests that the

appellate courts could properly “screen out attacks that

are clearly without merit” and grant leave if “a prima

facie case of merit is made out” 7 Moore’s Federal

Practice 60.30 [2] page 341.

However, this case demonstrates that through the

expedient of declaring a Rule 60(b) motion “frivolous”

a court of appeals may insulate its ruling and the ruling

of its district court from review and modification in

light of subsequent and controlling decisions of this

Court with which they clearly are in conflict.

This is a type of result which Rule 60(b), by its

noninclusion of a leave requirement, was designed to

preclude.

2. The decisions below are in conflict with the de-

cision of this court in Robertson.

The rule in Robertson is that the duty of the covrts

in balancing the FOIA against each of 100 more or less

statutes, including 35 U.S.C. §122(b) which restrict

access to specific Government records is to determine

whether the laws are “capable of co-existence” and if

so “to regard each as effective”:

(a) In Robertson, this Court emphasized that “the

[FOI] Act has two aspects” and that

“, . . It is axiomatic that all parts of an act ‘if

at all possible, are to be given effect.’” (Citations

omitted.) 45 L.Ed.2d at 170-171.

With regard to the interrelationship of the FOIA and

§ 1104 of the Federal Aviation Act with which it was

specifically confronted, the Court said:

14

“Earlier this Term, Mr. Justice Brennan, speak-

ing for the Court in the Regional Rail Reorganiza-

tion Cases, 419 US 102, .. . noted that ‘repeals by

implication are disfavored,’ id., at 133, . . . and that,

when courts are confronted with statutes ‘capable

of coexistence, it is the duty of the courts, absent

a clearly expressed congressional intention to the

contrary, to regard each as effective.’ Id., at 133-

134, . . . quoting Morton v. Mancari, 417 US 535,

551... (1974) ...” 45 L.Ed.2d at 173.

Applying these principles, this Court determined that

the FOIA and § 1104 of the FAA Act are “capable of

coexistence” and discharged its “duty ... to regard

each as effective.”

The decisions below fail to give eifect to important

parts of both the FOIA and 35 U.S.C. § 122, notwith-

standing the fact that these two statutes are clearly

capable of coexistence. Instead of discharging the courts’

“duty ... to regard each as effective’, these opinions—

in conflict with the rule in Robertson hold that exemp-

tion 3 repeals by implication that provision of § 122

that mandates public availability of “applications for

patents” that are “necessary to carry out the provisions

of any Act of Congress’’.

(b) One of the “two aspects” of the FOIA “seeks to

open public records to greater public access’,’ while

“the other .. . seeks to preserve the confidentiality

undeniably essential in certain area of Government opera-

tions”.® Robertson, supra, 45 L.Ed.2d at 170-171.

§ 122 has two like aspects. In one, it seeks to open

to the public those patent applications as to which

exclusion from “confidence” is “necessary to carry out

°T.e., the disclosure provisions of § 552(a).

®T.e., by the “nine explicitly exclusive exemptions”, 45 L.Ed.2d

at 171.

oe

ii

15

the provisions of any Act of Congress”; in the other,

it seeks to preserve in confidence all applications not so

“necessary” and as to which the Commissioner has not

determined that “special circumstances” warrant dis-

closure.

Thus, 35 U.S.C. § 122 provides:

“Applications for patents shall be kept in confi-

dence by the Patent Office and no information con-

cerning the same given without authority of the

applicant or owner unless

[1] necessary to carry out the provisions of any

Act of Congress, or

[2] in such special circumstances as may be de-

termined by the Commissioner.” (Paragraphing and

bracketed material added.)

The disclosure aspect of § 122 is concerned with those

applications “necessary to carry out the provisions of any

Act of Congress”. The applications in this category are

expressly excluded from its “confidence provisions” by

§ 122’s own terms. “The wisdom of the balance struck

by Congress is not open to judicial scrutiny.” Robertson,

supra, 45 L.Ed.2d at 174.

Under the rule in Robertson these records, accord-

ingly, cannot be subjected to exemption 3. Instead, the

disclosure provisions of the FOIA, § 552(a), apply di-

rectly to require that all such applications be “produced

on demand”. NLRB v. Sears, Roebuck & Co., 421 U.S.

132, (1975).’

7 The nondisclosure aspect of § 122 is concerned with applications

outside the disclosure categories [1] and [2], defined by § 122,

i.e., all those applications which are not “necessary to carry out the

provisions of any Act of Congress”, «nd which the Commissioner

does not “determine” to be subject to ‘such special circumstances”

as to warrant disregard of § 122’s confidence provisions. Only

the applications remaining “shall be kept in confidence” by the

Commissioner, and “no information concerning the same shall be

given without authority of the applicant or owner”.

16

The conflict in decision is significant. As will be

seen, it is now used by the Patent Office as justification

for a refusal to discharge its duty under 35 U.S.C. § 131

to grant patents only after a proper “search” and then

only where “after examination it appears that the ap-

plicant is entitled to a patent under the law”.

In a different context, the Department of Justice has

contended with apparent success in this case that Robert-

son “held that all nondisclosure statutes are covered by

that exemption [3]”—thus ignoring the mandate of this

Court that the FOIA and the nondisclosure statutes

wherever possible are to be so construed as to be “capable

of coexistence” with each “regard[ed] as effective.”

3. The decision of the Fourth Circuit Court of Ap-

peals rejecting petitioner’s Rule 60(b) motion as “frivo-

lous” condones the refusal of the Patent Office, in the

discharge of its duty under 35 U.S.C. § 131, to consider

nonpublic evidence in determining whether “under the

law” including 35 U.S.C. § 103, a patent “shall issue”

on applications pending before it.

The decision below thus endorses the basic conflict

between the Patent Office and the federal courts as to

whether such evidence is “necessary to carry out the

provisions of any Act of Congress”, 35 U.S.C. § 122, to

wit, the patent laws including 35 U.S.C. § 103.

In the federal courts, including this Court, such evi-

dence is considered “necessary” and is routinely ad-

mitted and weighed in adjudicating the validity of

patents. See the cases cited supra, p. 7, n. 1.

However, the Patent Office refuses to consider such

evidence. The result is that “a significant number of

patents have been and are being granted for trivial

innovations”.* The result is “the sagging reputation of

8 Marquis, “Improving Quality Control for Patents,” Minn. L.

Rev. 59, 67 (1974).

17

the patent system”, ibid. and the burdening of the courts

with a mass of complex cases that “seem to take an

inordinate amount of trial time” and which are there-

fore “unquestionably expensive”. Blonder-Tongue Labs

v. Univ. of Ill. Foundation, 402 U.S. 318, 337 (1971).

The Commissioner is now affirmatively using the de-

cision below as justification for his disdain of this

Court’s admonition in Graham v. John Deere Co., 383

U.S. 1, 18 (1966) that

“the primary responsibility for sifting out unpat-

entable material lies in the Patent Office. To await

litigation is—for all practical purposes—to debili-

tate the patent system”

and for the concomitant perpetuation of the dichotomy

between judicial and administrative patentability stand-

ards which this Court has twice criticized. Graham,

supra; Kewanee, supra.

Exhibit A hereof (infra, p. 3a) is a copy of a letter

from Lee Pharmaceuticals to the defendant Commis-

sioner of Patents calling attention to the dichotomy

between the Patent Office and the courts with respect

to the consideration of nonpublic evidence on the issue

of patentability. The letter is in the nature of a request

under the Freedom of Information Act as follows:

“At present, my company has a unique commer-

cial product constituting a carvable dental composite

restorative material covered by Application Serial

No. 504,838. I am writing this letter to request that

the Patent Office search for and make available to

my company under 5 U.S.C. 552(a) (3) those aban-

doned patent applications that may be in any way

germane, based on their subject matter, to the pat-

entability under any section of the patent statutes

of the claims of Application Serial No. 504,838—and

that those claims be evaluated relative to all aban-

doned patent applications so located.”

18

Exhibit B (infra, p. 5a) is the defendant Commis-

sioner’s initial rejection of Lee Pharmaceuticals’ request.

Exhibit C (infra, p. 7a) is Lee Pharamaceuticals’ ap-

peal from the initial rejection of its request (Exhibit

B).

Exhibit D (infra, p. 10a) is the “final decision for the

Department of Commerce” dated December 1, 1975 re-

jecting Lee Pharmaceuticals’ request on the following

grounds:

“Congress has directed that ‘[a]pplications for

patent shall be kept in confidence by the Patent [and

Trademark] Office and no information concerning

the same given without authority of the applicant

or owner * * *.’ 35 USC 122. The U. S. District

Court for the Eastern District of Virginia has held

in Sears v. Gottschalk, 357 F.Supp. 1327, that aban-

doned patent applications are barred from disclosure

by 35 USC 122, and therefore specifically exempted

by statute from disclosure under the Freedom of

Information Act, as provided in 5 USC 552(b) (3).

The Court’s decision was affirmed by the U. S. Court

of Appeals for the Fourth Circuit (502 F.2d 122).

Certiorari was denied by the Supreme Court on

June 30 of this year (sub nom. Sears v. Dann) and

rehearing was denied on October 6.

“T cannot agree with your contention that my duty

to ‘cause an examination to be made’ of patent appli-

cations (835 USC 131) requires me to consider aban-

doned patent applications as references. The same

contention was made, and rejected by the Court, in

Sears v. Gottschalk, supra.

“The two cases cited in your original request (Del

Mar Engineering Laboratories v. United States, 186

USPQ 42 (Ct. Cls. 1975), and Becton, Dickinsor v.

Sherwood, 187 USPQ 200 (5th Cir. 1975)) did not

__ involve the use of abandoned patent applications as

references.

a ee

19

“I cannot agree with your view that the exemption

of abandoned applications from disclosure conflicts

with the Supreme Court’s decision in Administrator,

FAA v. Robertson, 422 U.S. 255, 95 S.Ct. 2140. The

same contention was recently made by the plaintiff

in the Sears case and rejected by the Court in deny-

ing the plaintiff’s motion under Rule 60(b), FRCP,

for relief from judgment (E.D. Va., November 14,

1975).” (Emphasis added.)

CONCLUSION

The petition should be granted.

Respectfully submitted,

EDWARD §S. IRONS

1801 K Street, N.W.

Washington, D.C. 20006

296-8855

Attorney for Petitioner

APPENDIX

la

APPENDIX A

DECISION BY THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

ALEXANDRIA DIVISION

November 14, 1975

“THE COURT: ...I don’t think I have jurisdiction;

I think it’s improperly filed. I’ll dismiss it for that

reason.”

2a

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

73-1699

MARY HELEN SEARS,

Appellant,

vs.

ROBERT GOTTSCHALK, Commissioner of Patents,

Appellees.

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA, AT ALEXANDRIA.

Upon consideration of the plaintiff's motion to permit

the district court to consider a motion pursuant to rule

60(b) (6), by counsel,

IT IS ORDERED that the motion is denied.

For the Court—by Direction

/s/ WiLuiaM K. SLATE, II

Clerk

Filed: December 15, 1975

[SEAL]

8a

EXHIBIT A

LEE PHARMACEUTICALS

1444 Santa Anita Ave., P.O. Box 3836

South El] Monte, Calif. 91733

(213) 442-3141

September 9, 1975

HL 75-441

Mr. Joseph Nakamura

Solicitor, United States Patent Office

Washington, D.C. 20230

Dear Mr. Nakamura:

I am writing you as President of Lee Pharmaceuticals

and a named inventor on many of its patents and patent

applications, te express my dismay that abandoned

patent applications in the Patent Office files are not

publicly available to be searched before a patent applica-

tion is filed and are not used in examining patent ap-

plications after they are filed. This is particularly diffi-

cult for me to rationalize with what I understand to be

the fact that such abandoned applications are considered

by the courts as evidence that may invalidate an issued

patent. In this connection, I have noted the recent use

of non-public evidence to invalidate patents in Del Mar

Engineering Laboratories vs United States 186 USPQ

42 (Ct. Cls. 1975) and in Becton, Dickinson & Co. vs

Sherwood Medical Industries, Inc., No. 72-3599 decided

by the Fifth Circuit Court of Appeals July 28, 1975.

At present, my company has a unique commercial

product constituting a carvable dental composite restora-

tive material covered by Application Serial No. 504,838.

I am writing this letter to request that the Patent Office

search for and make available to my company under

5 U.S.C. 552(a) (3) those abandored patent applications

that may be in any way germane, based on their subject

4a

matter, to the patentability under any section of the

patent statutes of the claims of Application Serial No.

504,838—and that those claims be evaluated relative

to all abandoned patent applications so located.

I look. forward to your prompt response.

Very truly yours,

/s/ Henry Lee

HENRY LEE, Ph.D.

President

HL:lm

5a

¢ EXHIBIT B

U.S. DEPARTMENT OF COMMERCE

PATENT OFFICE

Address Only: COMMISSIONER OF PATENTS

Washington, D.C. 20231

September 30, 1975

Dr. Henry Lee

President, Lee Pharmaceuticals

1444 Santa Anita Avenue

P.O. Box 3836

South El Monte, Calif. 91733

Dear Mr. Lee:

This is in response to your letter of September 9, 1975,

received on September 16, 1975, requesting that the

Patent and Trademark Office search for and make

available to your company under 5 USC 552(a) (3), those

abandoned applications that may be germane to the

patentability of claims in application Serial No. 504,838.

I regret that your request must be denied. There are

literally hundreds of thousands of abandoned patent

applications in the Patent and Trademark Office. An

unreasonable amount of effort would be involved in locat-

ing any which might be germane to the patentability

of claims in application Serial No. 504,838. And even

if any were located, we would be prohibited by statute,

35 USC 122, from making them available to your com-

pany. The noted statute specifies that “|{a]pplications

for patents shall be kept in confidence by the Patent

Office * * *.” 35 USC 122. Abandoned applications, ac-

cordingly, are exempt from disclosure. 5 USC 552 (b) (3).

You also request an evaluation of the claims in applica-

tion Serial No. 504,838, relative to all abandoned patent

6a

applications located. This request is likewise denied since

5 USC 552(a)(3) applies only to existing records and

does not require an agency to create a record.

Should you desire to do so, you may submit a written

appeal from this decision within 30 calendar days after

the date of this letter. The appeal shall include a copy

of your original request, a copy of this letter and a

statement of the reasons why you believe this denial

is in error. The appeal should be addressed to The

Commissioner of Patents and Trademarks, Freedom of

Information Request Control Desk, Box 50, Washington,

D.C. 20231.

Sincerely,

/s/ Joseph F. Nakamura

JOSEPH F. NAKAMURA

Solicitor

ec: Asst. Gen. Counsel for Admin.

. are,

Ta

EXHIBIT C

[SEAL]

LEE PHARMACEUTIALS

1444 Santa Anita Ave., P.O. Box 3836

South El Monte, California 91733 U.S.A.

Tel. (212) 442-341 WATS: (800) 423-4173

TWX: (910) 587-3420

October 29, 1975

Mr. Joseph Nakamura

Solicitor, United States Patent Office

Washington, D.C. 20230

Dear Mr. Nakamura:

This a written appeal from the decision which appears

in the September 30, 1975 letter signed by Joseph F.

Nakamura, Solicitor. A copy of my original request

dated September 16, 1975 and of Mr. Nakamura’s Sep-

tember 30, 1975 letter are enclosed.

The reasons why I believe Mr. Nakamura’s denial of

my request is in error include the following:

1. As my original request points out non-public

evidence, including abandoned patent applications,

are considered by the courts as evidence that may

invalidate patents for failure to measure up to the

constitutional patentability standard as embodied, for

example, in 35 U.S.C. 103. Mr. Naxamura does not

suggest otherwise.

2. 35 U.S.C. 6 provides that the Commissioner .. .

shall superintend or perform all duties required by

law respecting the granting and issuing of patents”.

As a part of his duties the Commissioner is re-

quired to “cause an examination to be made” of each

application for patents and of “the alleged new

8a ; 9a

invention” contained therein and to issue a patent ) or all. Both the FOIA and § 122 have disclosure and

on such applications only “if on such examination nondisclosure aspects. Both aspects of both acts can

it appears that the applicant is entitled to a patent | and should be given effect.

ner Ge ew" 66 UM. 208. | The disclosure aspect of § 122 is concerned with those

3. To determine whether the “applicant is entitled ) applications “hhecessary to carry out the provisions of

to a patent under the law” it is necessary for the any Act of Congress”. The applications in this cate-

Commissioner to consider the evidence germane to | gory are expressly excluded from Its confidence pro-

that issue which is contained in abandoned patent | visions” by §122’s own terms. “The wisdom of _the

applications. balance struck by Congress is not open to judicial

scrutiny.” Robertson, supra, 45 L. Ed. 2d at 174.

My request that the Commissioner discharge that

duty as to my company’s application 504,838—a | Very truly yours,

duty which is imposed by the patent statutes—is

not rationally denied by Mr. Nakamura’s observation

that “5 U.S.C. 552(a) (3) ... does not require an /3/ Henry Lee

agency to create a record”.* HENRY LEE, Ph.D.

President

4. Since, as demonstrated by paragraphs 2 and 3, HL/rew

availability and consideration of abandoned applica- enclosures

tions is “necessary to carry out the provisions of

. “an Act of Congress” such records are excluded from

the confidence provisions of § 122—and are expressly

subject to the non discretionary disclosure portions

of that statute.

5. Mr. Nakamura’s conclusion that under 35 U.S.C.

122 and 5 U.S.C. (b)(3) abandoned applications

are “exempt from disclosure” conflicts squarely with

Administrator, F.A.A. Vv. Butterfield 422 U.S. 255,

45 L.Ed. 2d 165 (1975).

As explained in that decision, “all parts of an

act . . . are to be given effect” and “repeals by

implication” are not favored. Statutes capable of

coexistence are to be construed to give effect to both

* Notably my request was that abandoned applications which are

“germane” be considered in connection with my application Serial

No. 504,838—just as all other germane references are considered.

10a

EXHIBIT D

[SEAL]

UNITED STATES DEPARTMENT OF COMMERCE

PATENT AND TRADEMARK OFFICE

Address Only: COMMISSIONER OF PATENTS AND

TRADEMARKS

Washington, D.C. 20231

December 1, 1975

Dr. Henry Lee

President, Lee Pharmaceuticals

1444 Santa Anita Avenue

P.O. Box 3836

South El] Monte, California 91733

Re: Appeal from initial decision

denying a request under the

Freedom of Information Act

Dear Dr. Lee:

This is in response to your letter of October 29, 1975,

appealing from the denial of your request to have the

Patent and Trademark Office search for and make avail-

able to your company under the Freedom of Information

Act, 5 USC 552, those abandoned patent applications

that may in any way be germane to patentability of the

claims in your pending patent application. You had also

requested, and been denied, an evaluation of the claims

in the light of all abandoned applications so located.

I have reviewed the reasons why you believe the denial

of your request was in error but am not convinced that

the denial was wrong.

Congress has directed that “[a]pplications for patent

shall be kept in confidence by the Patent [and Trade-

lla

mark] Office and no information concerning the same

given without authority of the applicant or owner * * *.”

35 USC 122. The U.S. District Court for the Eastern

District of Virginia has held in Sears v. Gottschalk,

357 F. Supp. 1327, that abandoned patent applications

are barred from disclosure by 35 USC 122, and there-

fore specifically exempted by statute from disclosure un-

der the Freedom of Information Act, as provided in 5

USC 552(b) (3). The Court’s decision was affirmed by

the U.S. Court of Appeals for the Fourth Circuit (502

F.2d 122). Certiorari was denied by the Supreme Court

on June 30 o. this year (sub nom Sears v. Dann) and

rehearing was denied on October 6.

I cannot agree with your contention that my duty to

“cause an examination to be made” of patent applica-

tions (35 USC 181) requires me to consider abandoned

patent applications as references .The same contention

was made, and rejected by the Court, in Sears v. Gotts-

chalk, supra.

The two cases cited in your original request (Del Mar

Engineering Laboratories v. United States, 186 USPQ

42 (Ct. Cls. 1975), and Becton, Dickinson v. Sherwood,

187 USPQ 200 (5th Cir. 1975)) did not involve the use

of abandoned patent applications as references.

I cannot agree with your view that the exemption of

abandoned applications from disclosure conflicts with the

Supreme Court’s decision in Administrator, FAA Vv.

Robertson, 422 U.S. 255, 95 S. Ct. 2140. The same con-

tention was recently made by the plaintiff in the Sears

case and rejected by the Court in denying the plaintiff’s

motion under Rule 60(b), FRCP, for relief from judg-

ment (E.D. Va., November 14, 1975).

Finally, your request that an evaluation of the claims

in your pending application be made is a request to

have a record (evaluation) made. The Freedom of In-

12a

formation Act does not require agencies to create a

record, and your request was, therefore, properly denied.

I am, therefore, finally denying your Freedom of In-

formation Act request on the ground that the requested

records fall within the (b)(3) exemption of the Act

and the requested evaluation is not within the scope of

the Act. This is a final decision for the Department of

Commerce from which you have a right of judicial review

as specified in 5 USC 552(a) (4) (B).

Sincerely,

/s/ C. Marshall Dann

C. MARSHALL DANN

Commissioner of Patents and Trademarks

ec: Special Asst. to the Secretary

for Public Affairs

Asst. Secretary for Administration

Asst. General Counsel for Administration