# Petition — Sears v. Dann

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition
- **Published:** January 1, 1976
- **Citation:** 425 U.S. 904

## Text

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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

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385003_1564%3A1. Public record. Not legal advice.