Petition — Markham v. United States

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Supreme Court, U. &

+s FILED

In the

Supreme Court of the United States

OCTOBER TERM, 1976

vo. £67564"

E. L. MARKHAM JR.,

Petitioner,

UNITED STATES OF AMERICA,

Respondent.

PETITION FOR A WRIT OF CERTIORARI

To the United States Court of Appeals

for the Fifth Circuit

CHARLES WARREN VAN CLEVE,

1505 Ridgeview Drive,

Arlington, Texas 76012,

Counsel for Petitioner.

——

INDEX

OPINIONS BELOW

JURISDICTION __

QUESTIONS PRESENTED

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED Sue

STATEMENT OF THE CASE ...

REASONS FOR GRANTING THE WRIT

CONCLUSION

il CASE CITATIONS

Cases:

Billik v. Berkshire, 154 F. 2d 493 (2d Cir., 1947)

Burger v. United States, 295 U. S. 78 (1935)

Calder v. Bull, 3 Dallas 386 (1798)

Chambers v. Mississippi, 410 U. S. 284 (1973)

Freidus v. United States, 223 F. 2d 598

(C.A.D.C., 1955)

Davis v. Alaska, 415 U. S. 308 (1974) ..

Gaither v. United States, 413 F. 2d 1061

(C.A.D.C., 1969)

Lanzetta v. New Jersey, 306 U.S. 451 (1939)

McBoyle v. United States, 283 U. S. 25 (1931)

McConnell v. United States, 393 F. 2d 404

(5th Cir., 1958)

McMillan v. United States, 399 F. 2d 478

(5th Cir., 1968) »

New York Department of Social Services v. . Dublio,

413 U. S. 405 (1973)

North American Van Lines, Inc. v. United States,

243 F. 2d 693 (6th Cir., 1957) .

Parker v. Gladden, 385 U. S. 363 (1966)

Pointer v. Texas, 380 U. S. 400 (1965) .

Russell v. United States, 369 U. 5. 749 (1962)

St. Regis Paper Co. v. United States,

368 U. S. 208 (1961) |

United States v. Bass, 490 F. 2d (th Cir., 1974)

United States v. Dobbs, 506 F. 2d 445

(5th Cir., 1965)

United States v. Greenberg, 432 F. 2d 1106 (1970)

Case Citations — (continued)

United States v. Harris, 217 F. ee 86

(M.D. Ga., 1962) :

United States v. Houghton, 290 F. Supp. 422

(W.D., Wash., 1968; reversed 413 F. 2d 736

9th Cir., 1969) |

United States v. Lambert, 501 F. 2d 943

(5th Cir., 1974) sila eink hdd a

United States v. Moser, 509 F. 2d 1089

(7th Cir., 1975) 3

United States v. Nixon, 418 U. S. 683 (1974)

United States v. Stroop, 109 F. 2d 891

(6th Cir., 1940)

United States v. Wiltberger, | 5th Wheat. 76 (1820)

CONSTITUTIONAL PROVISIONS AND

STATUTORY PROVISIONS

Constitution of the United ae.

Amendment V . es

Constitution of the United States,

Amendment VI ba

Supreme Court Rules 19(b)

18 U.S.C. Federal Rules of Criminal

Procedure 21(6) |

18 U.S.C. 1001 .

28 U.S.C. 512; Sec. 704, Federal tick indie

Public Law, 93-595, Section 1, Federal Rules

of Evidence |

28 U.S.C. 1254(1) .

In the

Supreme Court of the United States

OCTOBER TERM, 1976

No. .

E. L. MARKHAM JR.,

Petitioner,

Unrrep STATES OF AMERICA,

Respondent.

PETITION FOR A WRIT OF CERTIORARI

To the United States Court of Appeals

for the Fifth Circuit

Petitioner, E. L. MARKHAM JR., prays that a writ of cer-

tiorari issue to review the judgment of the United States

Court of Appeals for the Fifth Circuit entered August 18,

1976, affirming his conviction under 18 U.S.C. §1001, and that

on hearing the judgment of conviction be reversed.

OPINIONS BELOW

The opinion of the Fifth Circuit Court of Appeals (Appen-

dix 1) is not yet reported.

An opinion of the District Court denying defendant’s

Motion for a New Trial (Appendix 2) is not reported in

Federal Supplement.

JURISDICTION

The judgment of the Fifth Circuit Court of Appeals was

entered on August 18, 1976. Timely Motion for Rehearing

was filed, and was denied on September 22, 1976. This Court

has jurisdiction under 28 U.S.C., §1254(1).

The Courts below decided and applied law on Federal

questions in conflict with applicable decisions of this Court.

The trial court also so far departed from the accepted and

normal course of judicial proceedings in contravention of

defendant’s Constitutional rights, and was sanctioned therein

by the Fifth Circuit Court of Appeals, as to call for an exer-

cise of this Court’s power of supervision. Supreme Court

Rules 19(b).

QUESTIONS PRESENTED

1. Whether the trial court erred, in a trial conducted

in September, 1975, in peremptorily refusing to apply

Rule 704 of the Federal Rules of Evidence — allowing

opinion evidence upon an ultimate issue of fact — said

Federal Rules of Evidence becoming effective July 31,

1975, thereby critically injuring the defendant’s cross-

examination right of confronting the witness against him

in violation of the Sixth Amendment and the defendant’s

fundmental right of due process in violation of the Fifth

Amendment.

2. Whether the trial court erred in limiting cross-

examination of defense counsel of an essential govern-

ment witness, Orlando F. Klein, thereby infringing the

defendant’s right of confronting the witness against him

in violation of the Sixth Amendment.

3. Whether the trial court erred in denying defendant’s

motion to dismiss the indictment, which was fatally de-

fective, both in being so vague that it failed to apprise

the defendant of the nature and cause of the accusation

against him, and also because of a mortal variance be-

tween the pleading, which charged concealment, and the

proof, which concerned falsity.

4. Whether the trial court erred in denying defendant’s

Motion for Judgment of Acquittal, in that the government

failed to meet the applicable standard of proof which

required the prosecution to negative every reasonable

hypothesis of innocence.

5. Whether the provision of 18 U.S.C. § 1001, namely

that, ““‘Whoever, in any matter within the jurisdiction of

any department or agency of the United States knowingly

or willfully falsifies, conceals or covers up by any trick,

scheme, or device, a material fact,” the single count

under which defendant was tried, so violated the principle

of legality as to be void for vagueness under general

constitutional due process standards.

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

Fifth Amendment

“No person shall be held to answer for a capital, or

otherwise infamous crime, unless on a presentment or

indictment of a Grand Jury, except in cases arising in

the land or naval forces, or in the Militia, when in actual

service in time of War or public danger; nor shall any

person be subject for the same offence to be twice put in

jeopardy of life or limb; nor shall be compelled in any

criminal case to be a witness against himself, nor be

deprived of life, liberty, or property, without due process

of law; nor shall private property be taken for public

use, without just compensation.”

Sixth Amendment

“In all criminal prosecutions, the accused shall enjoy the

right to a speedy and public trial, by an impartial jury of

the State and district wherein the crime shall have

been committed, which district shall have been previously

ascertained by law, and to be informed of the nature and

cause of the accusation; to be confronted with the wit-

nesses against him; to have compulsory process for ob-

taining witnesses in his favor, and to have the Assistance

of Counsel for his defense.”

28 U.S.C. §704 — Federal Rules of Evidence

“Testimony in the form of an opinion or inference other-

wise admissable is not objectionable because it relates

to an ultimate issue to be decided by the trier of fact.”

Supreme Court Rules 19(b)

“Where a court of appeals has rendered a decision in

conflict with the decision of another court of appeals on

the same matter; or has decided an important state or

territorial question in a way in conflict with applicable

state or territorial law; or has decided an important

question of federal law which has not been, but should

be, settled by this court; or has decided a federal ques-

tion in a way in conflict with applicable decisions of this

court; or has so far departed from the accepted and usual

course of judicial proceedings, or so far sanctioned such

a departure by a lower court, as to call for an exercise

of this court’s power of supervision.”

18 U.S.C. 1001

“Whoever, in any matter within the jurisdiction of any

department or agency of the United States knowingly

and willfully falsifies, conceals or covers up by any trick,

scheme, or device a material fact, or makes any false,

fictitious or fraudulent statements or representations, or

makes or uses any false writing or document knowing the

same to contain any false, fictitious or fraudulent state-

ment or entry, shall be fined not more than $10,000 or

imprisoned not more than five years, or both.”

28 U.S.C. 1254(1)

“Cases in the courts of appeals may be reviewed by the

Supreme Court by the following methods:

(1) By writ of certiorari granted upon the petition of

any party to any civil or criminal case, before or after

rendition of judgment or decree;”

Federal Rules of Criminal Procedure 21 (6)

“(b) Transfer in Other Cases. For the convenience of

parties and witnesses, and in the interest of justice, the

court upon motion of the defendant may transfer the

proceeding as to him or any one or more of the coun

thereof to another district.” : ”

Public Law 93-595, Section 1; Federal Rules of Evidence

“Effective Date and Application of Rules. Section 1 of

Pub. L. 93-595 provided in part: “That the following

rules shall take effect on the one hundred and eightieth

day beginning after the date of the enactment of this

Act (Jan. , 1975). These rules apply to actions, cases,

and proceedings brought after the rules take effect. These

rules also apply to further procedure in actions, cases,

and proceedings then pending, except to the extent that

application of the rules would not be feasible, or would

work injustice, in which event former evidentiary prin-

ciples apply.”

STATEMENT OF THE CASE

The indictment, returned on May 22, 1975, charged the

Petitioner, E. L. Markham Jr., with a single count offense

under 18 U.S.C. § 1001 and alleged that, from June of 1970

until October, 1973, he, “concealed and covered up by a

trick, scheme, and device material facts” involved in a patent

application concerning a building construction system. The

gist of the charge was that Markham endeavored to conceal

from the patent office the real inventof of some of the com-

ponents of the process for which he sought a patent. Peti-

tioner had been indicted on December 4, 1974, in the United

States District Court for the Eastern District of Virginia

on three counts of violation of 18 U.S.C. § 1001, on essentially

the same charge.

Upon defendant’s motion, pursuant to Rule 21(b) of the

Federal Rules of Criminal Procedure, the case was trans-

ferred to the United States District Court for the Northern

District of Texas, Dallas Division, on January 3, 1975. The

defense thereupon moved to dismiss the indictment; the

court did so as to Count III, but upheld Counts I and II.

On March 10, 1975, a week before trial was scheduled, the

court granted the government’s motion for an indefinite

continuance in order to obtain a superseding indictment, the

one on which defendant was tried. To this indictment

(Appendix 3) he pleaded not guilty on June 6, 1975. On

July 29, 1975, defendant moved to dismiss the remaining two

counts of the original indictment and also the superseding

single count indictment; the court did so as to the former,

but denied the latter.

The trial, before the Honorable Sarah T. Hughes, com-

menced on September 8, 1975. At the conclusion of the

government’s case on September, 10, 1975, the defense moved

for a judgment of acquittal which was summarily denied.

T. 445. Thereupon the defense rested and renewed the

Motion for a Judgment of Acquittal. The Court reserved

ruling on the Motion pending the jury verdict T. 446-447.

Later that day the jury returned a verdict of guilty. On

September 11, the Court, after hearing argument, again

denied the defendant’s motion for judgment of acquittal

T. 497. Subsequently Markham filed a Motion for New Trial

which the Court denied on September 14, 1975. On October 2,

1975, Markham was sentenced to two years probation and

fined Five Thousand Dollars ($5,000.00) .

From this, defendant appealed. The case was heard by a

Fifth Circuit panel consisting of Judges Gewin, Godbold

and Simpson, and conviction affirmed on August 18, 1976.

Petition for Rehearing was filed and duly denied on Septem-

ber 22, 1976, from which this Petition for Certiorari is taken.

The facts, prolix and prolonged, are essentially these. In

1957 Orlando F. Klein, the chief complainant in the case,

patented a building construction process. Appellant invested

in this process and was assignee of an interest therein. Be-

cause of insufficient funding, the process never reached com-

mercial fruition.

Between 1963 and 1969 Klein developed another building

process called Drycore, which in effect endeavored to provide

a complete, integrated and economical heating and cooling

system embracing an entire building. September, 1969,

Klein employed Markham as his attorney in relation thereto,

primarily to incorporate Drycore.

Shortly thereafter, in the same month, the attorney/client

relationship between Klein and Markham was severed, and

severed acrimoniously. Meanwhile Klein’s relations with his

Drycore investors and erstwhile franchisees deteriorated,

primarily because of his inaction in marketing his process,

his failure to incorporate as he had promised, and his mis-

representations that Drycore had patents pending, when

actually only the 1957 patent had gone through any of the

requisite legz| patent processes.

In this context several disgruntled investors, including

Edris Roberts, Billy J. Shipley and Henry Crowson, began

dealing with Markham in order to try and save their invest-

ment. To this end they formed a new corporation, Dry-

Therm, with Petitioner as President. Shortly

Roberts and Shipley assigned to Dry-Therm the rights sold

them by Klein under franchise agreements, and Markham

assigned Dry-Therm his rights under the 1957 patent. To

implement their interest a model house, based thereon, was

built in Houston.

Collaterally, to prevent the very real possibility of having

much of the process pass into the public domain and hence

become unpatentable, the parties sought to commence the

steps needed for patenting. For this purpose they undertook

legal professional consultation, from 1970 through 1973, with

Howard Moore and Gerald Crutsinger, Dallas patent at-

torneys. In May, 1970, the patent application, as prepared

by Crutsinger and Moore, was finalized. Shipley signed and

Roberts refused to sign the oath involved, which stipulated

that they were the original inventors of the improvements or

subject matter claimed in the application. Markham, as

President of Dry-Therm, signed on oath that he believed

that they were the inventors of the improvements involved

as set forth in the application for patent.

In reaction, Klein erupted. He began a fusillade of pro-

tests, barraging the Patent Office with complaints and taking

Appellant to an extensive inquiry by the Grievance Com-

mittee of the Fifth District of the State Bar of Texas. In

response to Patent Office inquiries of April, 1971, both Mark-

ham and patent attorney Moore filed affidavits; the gist of

Markham’s was to the effect that prompt action was es-

sential to overcome prior inaction and protect the corpora-

tion’s assigned rights.

Later in September, 1971, Shipley and Roberts filed dis-

claimers of inventorship. On March 11, 1972, patent attorney

Moore wrote the Patent Office stating that the two had re-

entered Klein’s employ, thus abandoning Dry-Therm, and

hence he was requesting the patent office to return the appli-

cation to the examining procedure. The Patent Office com-

plied, but first required a further affidavit from Markham

stating his continuing belief that Roberts and Shipley were

the inventors of the improvements. The matter was finally

dropped in 1973 and no patent concerning the process has

ever been issued.

REASONS FOR GRANTING THE WRIT

1. The essence of this case turns upon the willful con-

cealment of a material fact in a patent application. The

essence of this in turn depends upon the defendant’s state

of mind. Defendant was deprived of the opportunity to

present crucial evidence on this point by the trial court’s

abuse of discretion in unduly and even arbitrarily limiting

the scope of defense cross-examination of Mr. Gerald Crut-

singer, Dallas patent attorney and key prosecution witness.

Most crucially the court failed to follow the law itself. In

the cross-examination of witness Crutsinger, the main par-

ticipant in the preparation of the patent application, the

record reads:

Question: “Now, is the patent application so that it is

to be read and understood by someone skilled in

the art?”

Answer: “Yes.”

Question: “Now, you met with Mr. Markham on a

number of occasions did you not, sir?”

Answer: “Yes.”

Question: “Did you find him not to be skilled in the

art, sir?”

Answer: “I really don’t know how skilled he is.”

Mr. Koch. “I am going to object Your Honor, he is

asking for an opinion.”

The Court: “I sustain the objection.”

Mr. Daniel: “I think under the new rules that the

opinion would be admissible, the new rules of

evidence.”

The Court: “I have sustained the objection.”

Mr. Daniel: “All right.”

Question (by Mr. Daniel) “But you never went through

the patent application with Mr. Markham, is that

correct, sir, to explain the claims?”

Answer: “I don’t recall going through the claims with

him, no.”

Question: “And Mr. Markham did not provide any of

‘the technical information which went into the

patent application?”

Mr. Koch: “We are going to object, Your Honor. He is

leading the witness.”

The Court: “I sustain the objection.”

T. 363-364.

Soon thereafter the issue was renewed:

Mr. Daniel: “I have a question I would like to pose,

and Mr. Koch objected to it yesterday, and I would

like to direct Your Honor’s attention to a legal point

that’s involved here.”

The Court: “Ask the question again, then address the

legal point to me from where you are.”

Mr. Daniel: “All right.”

Question: (by Mr. Daniel) “The question is this:

Did you in in any of those conferences with

Mr. Markham and in your discussions advising him

with respect to the filing of these affidavits find

any evidence to, by trick, scheme, or device, to

withhold information from the Patent Office?”

Mr. Koch: “We are going to object, Judge. He is asking

for an opinion.”

Mr. Daniel: “Yes, Your Honor, I am, and I would like

to direct Your Honor’s attention to Rule 704 of

the new Rules of Evidence which are now applicable

to the trial of this case and which Rule has been

changed and says, “The testimony in the form of an

opinion or inference otherwise admissible is not

objectionable because it relates to an ultimate issue

. . . to be decided by the trier of fact.

“Now the ultimate issue here is .. .”

The Court: “I know what the ultimate issue is, and

I sustain the objection.” T. 380-81.

Rule 704 of the Federal Rules of Evidence states:

“Testimony in the form of an opinion or inference

otherwise admissible is not objectionable because it

relates to an ultimate issue to be decided by the trier of

fact.” Public Law, 93-595, January 2, 1975, 88 Statute

1937; 28 U.S.C. § 512.

Mr. Crutsinger was fully, even uniquely, qualified to

press an opinion. He and Mr. Howard Moore supervised

the patent application, T. 307, and conducted all the essential

steps of its preparation, T. 330, 349-351. One of Appellant’s

main trial defenses was good faith reliance on advice of

counsel, a defense curtly denied him by the trial court.

The court, without even so much as a speck of endeavor

to assess the merits of the issue, ignored the law. The Federal

Rules of Evidence became effective July 31, 1975, 180 days

after enactment on January 2, 1975, and specifically stated

in the preamble: |

“These rules also apply to further procedure in actions,

cases and proceedings then pending except to the extent

that application of the rules would not be feasible, or

would work injustice, in which event former evidentiary

principles apply.” Public Law 93-595 § 1.

Moreover, regarding Rule 704 the authoritative opinion of

the advisory committee stated,

“The basic approach to opinions, lay and expert in these

rules is to admit them when helpful to the trier at fact.

In order to render this approach fully effective to allay

any doubt on the subject, the so-called ‘ultimate issue’

rule is specifically abolished by the instant rule.” Public

Law 93-595 § 1; 28 U.S.C. § 5.

By every significant measure, the statute controls. Purpose

governs interpretation, Billik v. Berkshire, 154 F. 2d, 493,494

(2nd Cir. 1947), and courts are under a solemn duty not to

negate that purpose nor obviate Congressional goals. New

York State Department of Social Services v. Dublino, 413

U. S. 405, 419-20, (1973). Manifest intent to change the law

should be honored, United States v. Stroop, 109 F. 2d 891,

893-93, (6th Cir. 1940), and normally procedural changes

required by new legislation are regarded as immediately ap-

plicable io pending cases. United States v. Houghton, 290

F. Supp. 422, 427, (W. D. Wash. 1968; Reversed 413 F. 2d

736, 9th Cir., 1969). If substantial rights of a defendant are

involved, strict interpretation of penal matters and resolution

of ambiguity and reasonable doubts in his favor are required.

North American Van Lines, Inc. v. United States, 243

F. 2d. 693, 696-97 (6th Cir. 1957).

The right of cross-examination falls fully within this pur-

view. The constitutional right of confrontation includes cross-

examination and beth are among the fundamental require-

ments of a constitutionally fair trial. Pointer v. Texas, 380

U. S. 400, 403-05, (1965); Parker v. Gladden, 385 U. S. 363,

364-66, (1966). Their significant shrinkage or denial calls into

question the ultimate integrity of the fact finding process,

and requires bringing any competing interest of the trial pro-

cess causing that shrinkage into close examination. Chambers

v. Mississippi, 410 U. S. 284, 295, (1973). The self mandate

of this very court stipulates a duty to avoid a construction

that wculd suppress otherwise competent evidence unless

such a result is manifestly required. St. Regis Paper Company

v. United States, 368 U. S. 208, 218, (1961).

Here the law was turned inside out. A rule that had been

specifically abolished was enforced in the very teeth of the

statutory stipulation that the new rules would apply to

pending cases unless it would “work injustice.” By this

rejection, an injustice by omission was perpetrated. No com-

peting trial interest was specified or assessed as a reason for

denial, and competent relevant evidence going to the very

heart cf guilt or innocence was excluded. Strict interpreta-

tion was applied against the substantial rights of the de-

fendant, procedural change in his favor denied him, and

manifest congressional intent ignored.

Admittedly, overwhelming authority gives the Federal trial

court wide discretion in controlling the scope of cross-exami-

nation. That discretion, however, cannot reach so far as to

ignore the law itself, especially a generic statute designed

to govern the production of truth in the entire Federal

legal system. To do so constitutes an abuse of discretion

meriting full review and calling for reversal.

It is respectfully suggested that the classic ex post facto

tests of Calder v. Bull, 3 Dallas 386 (1798), apply. An ab-

solute of our criminal law requires that the rules of evidence

during the pendency or hearing of a case cannot be changed

to the detriment of an accused. It should be an equal ab-

solute that the benefit of the rules of evidence cannot be

withheld to the detriment of an accused.

2. The defendant’s rights were also injured by im-

proper restriction of the cross-examination of Orlando K.

Klein, chief complainant and star government witness in the

case.

13°

As the claimed original inventor of the process central to

the case, Klein’s testimony was vital to the prosecution both

to prove this supposed origination of the idea and to prove

through his contacts with Markham defendant’s alleged

requisite knowledge. Accordingly, it was vital to the defense

to diminish Klein’s credibility and elicit from him facts sup-

porting defense versions of the facts.

Consistently the court constricted defendant’s efforts to

elicit and discredit Klein’s testimony. The court deemed his

motivations irrelevant, T. 119-190, even though the defense

identified his numerous documents of protestation, T. 163-69,

and a record of extensive adversary inquiry between Klein

and Markham before the Fifth District Grievance Commit-

tee, T. 177-85, was unsuccessfully offered into evidence to

show Klein’s bias, T. 119, 169. The defense was, through this

proffer of evidence, endeavoring to show the civil nature of

the proceeding before the Patent Office, to enferably negate

criminal intent, T. 169-73, and to destroy the materiality of

the information allegedly withheld by Markham because the

Patent Office had been fully informed thereof. T. 177.

In denying this proffer, the court erred. Cross-examination

includes the right to show bias and prejudice and thus their

bearing on credibility. Davis v. Alaska, 415 U. S. 308, 317,

(1974). Cross-examination of witnesses in matters pertinent

to credibility should be given the largest possible scope,

McConnell v. United States, 393 F. 2d 404, 406 (5th Cir.

1968), and defendants in criminal cases are entitled to

thorough and sifting cross-examination. United States v.

Dobbs, 506 F. 2d 445, 447, (1965).

Where, as here, the bias and credibility of the main prose-

cution witness is not allowed to be either fully or thoroughly

shown, court discretion to limit its scope does not become

operative because the right has not been effectively exercised.

United States v. Greenberg, 423 F. 2d 1106, 1108 (5th Cir.

1970). If limitation is so applied a right is therefore denied,

and full consideration and reversal are therefore merited.

3. Uniquely among the circuits, the Fifth Circuit Court

of Appeals utilizes the “reasonable hypothesis” rule. This

holds, in effect, that in a circumstantial evidence case the

proof must be of such probative force as to lead to the evi-

dence of guilt, and that the circumstances must not only

be consistent with guilt but inconsistent with every reason-

able hypothesis of innocence. McMillan v. United States,

399 F. 2d 478, 479, (5th Cir., 1968); United States v. Bass,

490 F. 2d 846, 855, (5th Cir., 1974).

Although strongly urged upon the Fifth Circuit, the de-

cisional panel bypassed the Fifth Circuit’s own legal standard

and overruled this appeal allegation by simply elaborately

reviewing the fact situation (See Appendix 1.)

This case involved mainly circumstantial evidence and

inference therefrom. Moreover, since 18 U.S.C. § 1001 is a

highly penal statute, guilty knowledge cannot be inferred

from general activity, particularly where much of the activity

in question was handled by the defendant’s attorney.

Freidus v. United States, 223 F. 2d 598 (C.A.D.C., 1955).

Because one of Appellant’s main defenses was reliance upon

expertise in the form of advice of patent counsel, a ground

unconstitutionally restricted as heretofore urged, we re-

spectfully request a full hearing so that the “reasonable

hypothesis” standard may be reasonably and thoroughly

applied to the merits of this case.

4. Throughout this trial and appeal defendant has urged

the insufficiency of the indictment as a matter of law. This

is urged again, if for no other reason that this constitutes

the first discernible patent prosecution under 18 U.S.C.

§$ 1001, at least since 1948.

Paragraph 8 of the indictment, the only one which begins

to approach the requisite sufficiency of specificity, purports

to deal with four material facts covering concealment, but

cursory analysis reveals that they are only four varieties of

the same fact, and as such are far too vague to apprise the

defendant of the charge against him and so enable him to

prepare an adequate defense. A basic rule of pleading re-

quires that the allegations must be particularized, and not

simply track the statute. United States v. Harris, 217 F.

Supp. 86, 87 (M. D. Ga., 1962); Russell v. United States,

369 U. S. 749, 770, (1962). And although a bill of particulars

was herein supplied, it is well settled that this will not cure

an otherwise invalid indictment. (Russell v. United States,

supra).

Moreover, the. government by its own explicit admission

failed to carry its required burden of proof. In his argument

the prosecutor declared:

“T will tell you what is the business of the United States

government * * * when some individual lies to the

government and expects to receive something for it.

Now, that’s the government’s business. That’s what this

lawsuit is about, and that is all it’s about.” T. 445.

He returned to the same theme a moment or so later:

“I want you to consider these things. That’s the purpose

of that, get the jury’s mind off of what it’s supposed to be

considering, the fact that Mr. Markham made a false

statement.” T. 456.

And the prosecutor concluded his opening argument by

stating:

“Now, this jury is smart enough to understand this situ-

ation. It’s not easy to convict a man like this, but I will

tell you this, there is no question in this jury’s mind

that he knew what was in that, and if he knew what was

in that, in those statements right there, or in those

plans, he made a false statement. And, if he made a

false statement, he is guilty and for that reason, and

only that reason, I will ask this jury to return a guilty

verdict.” T. 457-58.

Thus did the government base its case on falsity, the gist

of the two dismissed indictments, whereas the government

charged and proceeded to trial on concealment. This consti-

tutes a fatal variance between pleading and proof, a crucial

rule here enhanced by the prosecution’s own admission.

Gaither v. United States, 413 F. 2d 1061, 1072, 1079,

(C.A.D.C., 1969); Burger v. United States, 295 U. S. 78, 88,

(1935).

Special appellate scrutiny should be exercised, since the

range by which proof may vary from the indictment is much

narrower in a false statement case than in many other types

of prosecution. United States v. Lambert, 510 F. 2d 943 (5th

Cir. 1974). For this reason, and because the illicitly unspe-

cific indictment placed the Appellant in an unpreparable

defense position injuring his substantive rights. United

States v. Moser, 509 F. 2d 1089, 1092 (7th Cir., 1975) we

request full review and final reversal.

5. Underlying and irradiating the whole of our legal sys-

tem is the principle of legality, the cardinal commitment that

the criminal law must be legitimately enacted, reasonably

defined, and strictly construed. United States v. Wiltberger,

5 Wheat. 76, (1820). 18 U.S.C. § 1001, in its concealment

provisions, substantially violates that principle.

Out constitutional law enshrines this principle, mandating

that,

“fair warning should be given to the world, in language

that the common world will understand, of what the

law intends to do if a certain line is passed. To make

the warning fair, so far as possible, the line should be

clear.” McBoyle v. United States, 283 U. S. 25, 27,

(1931).

The statute in question, in this one provision alone, stipu-

lates two mens reas, three patterns of conduct, and three

methods of implementation, each of them general in itself

and with no provision whatsoever for their interrelationship.

There exists no clarity, only a fine, deep gray mist constitut-

ing a vague admonition of beware that amounts to a veritable

model of obfuscation.

This court well enunciated the firmament rule wherein

such vagueness is involved in Lanzetta v. New Jersey, 306

U. S. 451, 454, (1939):

“It is the statute, not the accusation under it, that

prescribes the rule to govern conduct and warns against

transgression * * *. No one may be required at peril of

life, liberty, or property to speculate as to the meaning

of penal statutes. All are entitled to be informed as to

what the statute commands or forbids * * *. And a stat-

ute which either forbids or requires the doing of an act in

terms so vague that men of common intelligence must

necessarily guess at its meaning and differ as to its

— violates the first principle of due process

w.”

This one portion of this one statute, with its eight com-

ponents, without any guide as to’their nature or relationship,

and all centering about the essentially mercurial concept of

concealment, perforce makes citizens of common intelligence

guess as to its meaning and in that intelligence inescapably

differ as to its application. As such it therefore violates the

first principles of due process and thereby the Constitution

of the United States. We therefore respectfully request its

review, urge assessment of its vagueness, and ask determina-

tion of its unconstitutionality.

6. The Judge who tried this case eventually had real

reservations about its criminality. At sentencing the trial

court explicitly states, “I have considered this matter very

seriously. The crime is more a civil offense than it is a

criminal offense in my opinion.” (Sentencing Proceedings)

T. 12-13. This, together with the issues raised by this pe-

tition, merit its full review.

Moreover, the points so raised focus on basic constitutional

issues. In an hour of grave constitutional crisis this very

court formulated a meaningful summary of these principles:

“The right to the production of all evidence at a criminal

trial similarly has constitutional dimensions. The Sixth

Amendment explicitly confers upon every defendant in

a criminal trial the right ‘to be confronted with the wit-

nesses against him’ and ‘to have compulsory process for

obtaining witnesses in his favor’. Moreover, the Fifth

Amendment also guarantees that no person shall be

deprived of liberty without due process of law. It is the

manifest duty of the courts to vindicate these guaran-

tees, and to accomplish that it is essential that all rele

vant and admissible evidence be presented.” United

States v. Nixon, 418 U. S. 683, 711, (1974).

It is respectfully requested that the meaning and spirit

of this summit declaration of law be applied to the case at

bar, that certiorari therefore be granted and hearing held,

and that upon consideration of the merits this case be

reversed.

CONCLUSION

For the foregoing reasons this Petition For Writ of Cer-

tiorari should be granted.

CERTIFICATE OF ee

I do hereby certify that I have on this*0 ” day of October,

1976 mailed three copies of the foregoing Petition to each of

the following counsel of record at the address indicated, by

certified mail with sufficient postage prepaid:

Michael T. Carnes

1100 Commerce St.

Dallas, Texas 75242

I further certify that all parties required to be served have

been served.

CHARLES WARREN VAN CLEVE,

1505 Ridgeview Drive,

Arlington, Texas 76012,

Robert H. Bork

Solicitor General of

The United States,

Room 143,

Main Justice Building,

Washington, D.C. 20530

Appendix 1

UNITED STATES v. MARKHAM 5162

UNITED STATES of America,

Plaintiff-Appellee,

E. L. MARKHAM, Jr.,

Defendant- Appellant.

No. 75-3839. —

United States Court of Appeals,

Fifth Circuit.

Aug. 18, 1976.

Defendant was convicted in the

United States District Court for the

Northern District of Texas, at Dallas,

Sarah Tilghman Hughes, Senior District

Judge, of attempting to conceal from the

patent office the true inventor of a proc-

ess for which a patent was sought, and

he appealed. The Court of Appeals,

Simpson, Circuit Judge, held. inter alia,

that the indictment was sufficient to in-

form defendant of the charges, that evi-

dence adduced at trial supported defend-

ant’s conviction, and that the trial court

did not err in limiting defendant’s coun-

sel’s cross-examination of two witnesses.

Affirmed.

1. Indictment and Information <= 117

Validity of indictment is determined

from reading indictment as whole, and

by practical, not technical, considera-

tions.

2. Fraud @=69(2)

Indictment charging that defendant

attempted to conceal from patent office

the true inventor of a process for which

a patent was being sought was sufficient

to inform defendant of crime with which

he was charged and to enable him to

prepare a defense. 18 U.S.C.A. § 1001;

85 U.S.C.A. § 102; Patent Office Prac-

Synopses, 3

tice Rules, rule 47(), 35 U.S.C.A. App.;

Fed.Rules Crim.Proc. rule 7(c), 18 U.S.

C.A.

3. Indictment and Information 260,

71.2(2)

Test of sufficiency of indictment is

not whether indictment might have been

drawn with greater certainty and exacti-

tude, but rather whether it set forth ele-

ments of offense charged and sufficient-

lv apprises defendant of charges to pre-

pare for.

4. Fraud e69(5)

Evidence supported defendant's con-

viction of attempting to conceal from

patent office true inventor of process for

which patent was sought. 18 U.S.C.A.

§ 1001.

5. Criminal Law 31

In order for reliance upon expert's

opinion to be valid defense to criminal

charges, reliance on expert must be in

good faith and after fuli disclosure of

relevant facts to such expert.

6. Criminal Law @1153(4)

Witnesses 2267

Scope of cross-examination is matter

within trial court’s sound discretion, and

error will be found only upon showing of

abuse of that discretion — si;

7. Criminal Law @ 11192)

. Record” in prosecution for attempt-

ing to conceal from patent office true

inventor of process for which patent was

sought failed to show that trial court

abused its discretion in manner in which

it restricted cross-examination by de-

fendant of prosecution witnesses. 18

U.S.C.A. § 1001; Federal Rules of Evi-

dence, rule 704, 28 U.S.C.A.

8. Fraud *68.10(3)

In order for there to be liability un-

der statute prohibiting making of false

yilabi and Key Number Classificauon

The Synopses, Syiled: and Key Number Classifi-

cation constitute no part of the opimon of the rourt

statements or concealing facts from

government agency, it is not necessary

that government agency must be actual-

ly deceived; rather, it is required only

that fraud in question have natural tend-

ency to influence, or be capable of af-

fecting or influencing, governmental

function. 18 U.S.C.A. § 1001.

Appeal from the United States Dis-

trict Court for the Northern District of

Texas.

Before GEWIN, GODBOLD and

SIMPSON, Circuit Judges.

SIMPSON, Circuit Judge:

The appellant, E. L. Markham, Jr.,

was convicted after jury trial under an

indictment charging him in a single

count with violation of Title 18, U.S.C.,

Section 1001. The indictment was based

upon the prosecution by appellant of a

patent application before the United

States Patent Office, the charge being

essentially that Markham attempted to

conceal from the Patent Office the true

inventor of the process for which a pat-

ent was sought.

Three purported errors of the trial

court are urged on appeal. Markham

asserts that the court erred (1) in deny-

ing defendant’s motion to dismiss the in-

dictment as facially insufficient, (2) in

denying his motion for judgment of ac-

quittal because of insufficiency of the

evidence, and (3) in prejudicially limiting

the scope of defense counsel's cross-ex-

amination of certain witnesses. We find

each point raised to lack merit, and ac-

cordingly affirm.

FACTS

Viewing the evidence at trial in the

light most favorable to the government,

Glasser v. United States, 1942, 315 U.S.

UNITED STATES v. MARKHAM

60, 80, 62 S.Ct. 457, 469, 86 L.Ed. 680,

704; United States v. Warner, 5 Cir.

1971, 441 F.2d 821, 831, we note the fol-

lowing rclevant facts.

In 1957 Orlando F. Klein patented a

building process for construction of

buildings by using corrugated asbestos

panels with insulation sandwiched be-

tween them. Appellant invested in this

process, and was an assignee of an inter-

est in the patent. One house was built

using this process and a second was par-

tially completed. The project ran out of

funds so that the process was never com-

mercially exploited. Appellant and his

fellow investors never received a return

on their investment.

Between 1963 and 1968 Klein devel-

oped another building process he termed

the “Drycore” system which differed

substantially from the patented system.

The new concept, simply described,

called for the use of horizontally corru-

gated asbestos panels with insulation

sandwiched between them, to be erected

prior to the pouring of the slab and

foundation of the building, with the as-

bestos panels serving as walls. Insulated

heating and cooling ducts were formed,

and steel reinforcing rods were set lac-

ing through the asbestos walls through-

out the area for the foundation and

floors. Thus when the foundation and

floor slab were poured in concrete, the

walls, floor foundation, and heating and

cooling ducts all became one integrated

unit. The roof, constructed of the same

material, was to be similarly tied to the

structure by reinforcing bars and con-

crete, resulting in an extremely well in-

sulated building designed to be economi-

cally and quickly built.

Between 1965 and 1969, Orlando Klein

and Markham met several times to dis-

cuss the system. In 1968 Klein had an

architectural firm draw up a set of

UNITED STATES v. MARKHAM

house plans utilizing the Drycore pro-

gram. These plans clearly identified

Klein as developer of the system by

means of a printed legend. Copies of

the plans were distributed in 1968 to ap-

pellant and several other persons. In

January, 1969, Klein and several inves-

tors to whom he had sold franchises in

the Drvcore system began construction

of a model home in Grand Prairie, Tex-

as, using Klein's plans. Markham was

not an investor, although he was attor-

ney for the project, which was to be

incorporated. He appeared to believe

that his percentage of the prior patent

gave him a similar interest in the Dry-

core process. The Grand irie house

took nine months to complete rather

than the anticipated 21 days. The inves-

tors, the actual builders of the house,

blamed their difficulties on Klein.

Markham did not see the house until it

was nearly complete. At that time signs

around the house prominently stated

that the construction technique had been

developed by Klein.

“& Klein and his wife went to Markham’s

office on September 19, 1969, to sign

articles of incorporation for the Drycore

project. When they saw the final docu-

ments they expressed doubts and stated

their desire to obtain another legal opin-

ion before they signed. Appellant be-

came angry and ordered the Kleins from

his office, which marked the end of their

attorney/client relationship. The follow-

ing day Klein wrote Markham that it

was important for the process to be in-

corporated to avoid a “deterioration” of

the total concept, which he described as

“entirely foreign” to the method patent-

ed in 1957.

Klein’s relationship with the inv ators

and purported franchisees rapidly deteri-

orated after the Grand Prairie model

home was completed. Those investors

‘realized that they were in danger of los-

ing their money due to Klein’s inability

or refusal to take any action to market

or distribute his process. Klein, aside

from not having yet incorporated his

project, as he had promised, had misled

the investors by stating that his con-

struction process was covered “by pat-

ents granted and pending”. The only

existing patent was that of 1957.

Klein's concept of patent pending was

merely that he had placed documents

with his patent lawyer in anticipation of

filing an application. Klein also failed

to carry out a promise to build a model

home in Houston prior to a major build-

er’s conference there in early 1970.

Several disgruntled investors, includ-

ing Messrs. Roberts, Shipley, and Crow-

son, met with Markham in December

1969 to discuss means of protecting their

investments. A decision was reached to

construct a Houston demonstration home

without Klein's participation, but using

the plans and knowledge they had

obtained from constructing the Grand

Prairie home. The group planned also to

sell franchises for the building method.

To this end a corporation, “Dry-Therm”,

was formed, with Markham as president.

Tentative plans were made to escrow a

percentage of Dry-Therm profits for the

Kleins. Shipley, Roberts, and Crowson

assigned to liry-Therm the rights Klein

had sokl them under franchise agree-

ments. Markham assigned to Dry-

Therm his supposed interest under the

old patent. Markham also furnished the

major portion of the funds required to

build the Houston house. This house

was built, primarily by Shipley and Rob-

erts, very quickly in January of 1970.

With the exception of minor variations

and innovations, the Houston house was

substantially identical to the Grand Prai-

rie model house. Appellant and Roberts

5165

prepared an advertising brochure from

the Grand Prairie plans and prior adver-

tising material of Klein.

Klein had not filed for a patent on his

building process. The investors feared

they would lose their investments be-

cause one year after the completion of

the Grand Prairie model home the con-

cepts of Drycore would become prior art

and a part of the public domain, and

therefore unpatentable.' Markham ar-

ranged a meeting between Shipley, Rob-

erts, Crowson, and his patent attorney,

Howard Moore. Roberts, for one, assert-

ed at trial that he understood that a

patent application was to be filed on be-

half of Klein, and that Moore had said,

such action was possible. Markham

asked Roberts nd Shipley whether they

thought they had any patentable ideas.

Each man suggested relatively small de-

sign modifications of the Klein process,

and sketched these ideas for the benefit

of the patent attorney. The patent at-

torney advised Markham that the Dry-

core process was distinct from the 1957

patented process, and that Markham’s

interest in the 1957 patent, and by con-

tract in derivative patents, afforded him

no rights in the Drycore system. After

the meeting was concluded, Markham

cautioned Crowson, Roberts, and Shipley

to inform no one of what they had

heard.

1. See Title 35, U.S.C. § 102, which provides in

part that:

“A person shall be entitled to a patent un-

less—

>. > . 7 . 7

(b) the invention was in public

use or on sale in this country, more than one

year prior to the date of the — for

patent in the United States

2. Rule 47(b) of the Rules of Practice in Patent

Cases, 37 C.F.R. § 1.47(b) provides in part

that:

UNITED STATES v. MARKHAM

Moore's associate, Crutsinger, prepared

a patent application for the building con-

struction method. Drawings used to il-

lustrate the patent application were

traced by the patent lawyer from the

plans used for the Grand Prairie house.

Shipley and Roberts were named the

joint and sole inventors of all the

processes disclosed, when in fact no more

than part of the peripheral ideas were

arguably traceable to them. Appellant

remained in contact with Crutsinger dur-

ing the period of preparation of the ap-

plication.

In May of 1970 the patent application

was completed. Shipley signed the in-

ventor’s oath, appearing to believe that

all the ideas contained therein were his

and Roberts. After studying a copy of

the application Roberts refused to sign

the oath. Despite this refusal, Mark-

ham, as president of Dry-Therm, the as-

signee of Shipley’s and Roberts’ “fran-

chise rights” obtained from Klein, signed

an oath that he believed Shipley and

Roberts to be the sole and original in-

ventors of the process? Meanwhile

Klein received a copy of the patent ap-

plication from Roberts. He immediately

wrote the Patent Office complaining

that his invention was improperly repre-

sented within the Dry-Therm application

as that of Shipley and Roberts. In De-

cember, 1970, Markham suggested to

“Whenever an inventor refuses to execute

an application for patent, . @ person

to whom the inventor has assigned or agreed

in writing to assign the invention or who

otherwise shows sufficient proprietary inter-

est in the matter justifying such action may

make application for patent on behalf of and

as agent for the inventor. Such application

must be accompanied by proof of the perti-

nent facts and a showing that such action is

necessary to preserve the rights of the par-

ties PO Ses

UNITED STATES v. MARKHAM

Klein that he honor appellant’s applica-

tion, since Klein was without funds to

file on his own behalf. Klein refused,

and threatened suit against all parties

involved in what he termed a “take-

over”.

On April 2, 1971, the Patent Office

wrote Moore requesting a further show-

ing of the reasons Roberts refused to

sign the inventor's oath, and the necessi-

ty for the submission of appellant's affi-

davit in lieu thereof. Markham and

Moore each submitted an affidavit in re-

ply. Appellant stated that a demonstra-

tion home had been built almost a year

prior to the filing of the patent applica-

tion (the Grand Prairie house), and that

prompt filing was therefore necessary to

protect the rights of Dry-Therm, the as-

signec. He informed the Patent Office

also that Roberts had been in contact

with a “competitor”, Orlando Klein, who

had failed to carry out prior licensing

agreements concerning the process. Ap

pellant said that Klein had learned the

contents of the patent, so that prompt

action on the part of Dry-Therm in filing

the application was essential. Markham

did not mention Klein’s relationship to

the Grand Prairie house.

Subsequently, Shipley and Roberts on

September 27, 1971, filed disclaimers

with the Patent Office denying partici-

pation in the inventorship. Each asked

that his name be withdrawn from the

application. Following correspondence

from the Patent Office, Moore wrote the

Patent Office March 22, 1972, stating

that Shipley and Roberts had entered

the employ of Klein, and thus had aban-

doned Dry-Therm. He requested that

the Patent Office return the application

to the examining procedure. The Patent

Office complied with this request, but

first required a further affidavit from

Markham stating hi: continuing belief

—— +s

that Roberts and Shipley were the true

inventors of the process. No patent was

issued on the Dry-Therm patent applica-

tion. In late 1973 it was finally aban-

doned. Klein had meanwhile filed his

own patent on the Drycore process. The

Patent Office never issued a patent on

this application.

THE INDICTMENT

Rule 7c) of the Federal Rules of

Criminal Procedure requires that the in-

dictment set forth a “plain, concise, and

definite written statement of the ersen-

tial facts constituting the offense

charged”. The Supreme Court has

recently held:

“an indictment is sufficient if it, first,

contains the elements of the offense

charged and fairly informs a defend-

ant of the charge aguinst which he

must defend, and, second, enables him

to plead an acquittal or conviction in

bar of future prosecutions for the

same offense”.

Hamling v. United States, 1974, 418 U.S.

87, 117, 94 S.Ct. 2887, 2907, 41 L.Ed.2d

590, 620. The point in contention in this

case is whether the indictment “fairly

informs [the] defendant of the charge

against which he must defend”. Russell

v. United States, 1962, 269 U.S. 749, 82

S.Ct. 1088, 8 L.Ed.2d 240; United States

v. Cruikshank, 1876, 92 U.S. 542, 23

L.Ed. 588; United States v. Smith, 5 Cir.

1975, 523 F.2d 771; United States v.

Mann, 5 Cir. 1975, 517 F.2d 259, cert.

denied 1976, 423 U.S. 1087, 96 S.Ct. 878,

47 L.Ed.2d 97; United States v. Mekjian,

5 Cir. 1975, 505 F.2d 1320. :

A single count indictment, five pages

in length, was filed on May 23, 1975,

charging appellant with having violate!

Title 18, U.S.C., Section 1001, by conceal-

ing and covering up material facts relat-

5167 UNITED STATES v. MARKHAM

ing to a patent application filed with the

United States Patent Office. The appel-

lant considers this indictment to be fa-

cially insufficient in that it did not set

forth the particulars of the offense

charged.

{1] The validity of an indictment is

determined from reading the indictment

as a whole, Dunbar v. United States,

1895, 156 U.S. 185, 190, 15 S.Ct. 325, 327,

39 L.Ed. 390, 392, and the validity of the

indictment must be determined by prac-

tical, not technical, considerations, Unit-

ed States v. Crim, 10 Cir. 1975, 527 F.2d

289. See further, United States v.

Smith, supra, at 779; United States v.

Miller, 5 Cir. 1974, 491 F.2d 638, 649,

OFFENSE CHARGED

7. Beginning on or about June 1, 1970, and

continuing thereafter until on or about October

1973, the defendant MARKHAM knowingly,

wilfully, and in violation of Title 18, United

States Code, Section 1001, concealed and cov-

ered up by a trick, scheme and device material

facts relating to the aforesaid patent applica-

tion (a matter within the jurisdiction of the

Patent Office, an agency of the United States).

8. In furtherance and pursuance of such vi-

olation, the defendant knew and covered up

one or more material facts as set forth more

particularly as follows:

(a) Defendant knew and covered up the fact

that Edris Roberts and Billy J. Shipley were

not the original and first inventors of all of the

improvements or subject matter described and

claimed in the patent application.

(b) Defendant knew and covered up the fact

that Edris Roberts and Billy J. Shipley made

no inventive contribution at all to some of the

improvements or subject matter described and

claimed in the patent application, including

that covered by one or more of the following

claims: 14, 17, 22 and/or 24:

that Orlando F. Klein invented, discovered, or

knew of the improvements or subject matter

claimed in one or more of the claims of the

patent application, and Klein did so before

Edris Roberts and Billy J. Shipley;

cert. denied 1975, 419 U.S. 970, 95 S.Ct.

236, 42 L.Ed.2d 186.

The first three paragraphs of the in-

dictment set forth the history of Klein’s

building construction system and the cir-

cumstances under which the government

alleged the appellant and Shipley and

Roberts learned the details of the con-

struction process, referring particularly

to the Grand Prairie house. Paragraphs

four through six contained the govern-

ment’s contentions as to the filing of the

patent application, detailing the chronol-

ogy of the sworn statements filed by

Markham alleging Roberts and Shipley

to be the inventors of the system.

Paragraphs 7, 8, and 9 subheaded “Of-

fense Charged” (set forth in the

margin)* contained the meat of the in-

(d) Defendant knew and covered up the fact

that Edris Roberts and Billy J. Shipley had

worked with Klein and learned of his inven-

tion, discovery, or knowledge or such improve-

ments while he was instructing them in con-

structing the demonstration house in Grand

Prairie, Texas.

9. In furtherance and pursuance of such vi-

olation, the defendant did, among other things,

the following:

(a) On or about June 1, 1970, defendant

caused a patent application to be filed in the

Patent Office naming Roberts and Shipley as

inventors, among other things, of the system

Klein had taught them; and defendant did this

after he had secured from Roberts and Shipley

an assignment of their entire interest in the

application to a corporation he controlled.

(b) On or about June |, 1970, defendant as-

serted the following in a statement under oath

he signed and caused to be filed with the Pat-

ent Office in regard to the aforesaid patent

application:

: I do verily believe the said Edris

Roberts to be the original, first and joint

inventor with Billy J. Shipley of the improve-

ments in BUILDING CONSTRUCTION de-

scribed and claimed in the annexed specifi-

GUS Cw ltl

By these assertions, defendant intended to

convey to the Patent Office the impression

that Roberts and Shipley were the original ana

UNITED STATES v. MARKHAM 5168

dictment. The elements of the offense

were set forth in paragraph 7. Para-

graph 8 listed four specific material

facts one or more of which the defend-

ant was alleged to have known and cov-

ered up. Paragraph 9 described four

separate actions taken by the defendant

to conceal the material facts of para-

graph 8. Jurisdiction and venue were

alleged in the concluding paragraph, 10.

Appellant argues that the indictment

was deficient because it did not identify

any ideas originated by Klein in the lan-

guage of the patent application which

encompassed these ideas. We reject this

contention as specious. The indictment

specified that the building process was

developed by Klein, that Markham knew

this, and that Markham knowingly and

willfully misrepresented to the Patent

Office that Shipley and Roberts were the

true inventors. The indictment charged

much more than that somewhere within

the lengthy patent application there lay

an unidentified idea attributable to

Klein which Markham concealed from

the government.

{2,3} It bears emphasis that Mark-

ham was charged under the first clause

of Section 1001, the concealment section,

as opposed to the more common case of

a charge being brought under the second

clause, or “false statement” provision.

Concededly, under this indictment, Mark-

ham’s assertions that Shipley and Rob-

first inventors of all of the improvements

erts were the true inventors of the build-

ing process to be patented not only con-

cealed the true state of affairs, but were

also false statements. Concealment and

falsity were bound together in the con-

text here. This duality is reflected

throughout the record. Passages from

government counsel's arguments to the

jury and comments throughout the trial

reflect the Government’s position that

Markham's statements were false. This

is not in any manner inconsistent with

the charge that Markham concealed

from the Patent Office the true inventor

of the building process. Paragraph 8 of

the indictment identified the information

Markham knew and covered up from the

Patent Office. These allegations

charged concealment within the meaning

of the statute, and the proof bore out

the charge. The Government position

was that the patent application violated

§ 1001—-not because it contained false

information—but because it withheld

and covered up information. Markham

was charged with covering up the fol-

lowing material facts known to him: (a)

that Roberts and Shipley did not invent

all the improvements claimed in the ap-

plication, (b) that Roberts and Shipley

made no contribution to some improve-

ments, including claims 14, 17, 22, and/or

24, (c) that Klein was the original inven-

tor of one or more claims, and (d) that

Shipley and Roberts had worked with

By these assertions, defendant intended to

convey to the Patent Office the impression

that Roberts and Shipley were the original in-

ventors of all the subject matter claimed in the

aforesaid patent application,

(d) During the period of time from approxi-

mately June 1, 1970, through approximately

October 1973, defendant failed to inform the

Patent Office of one or more of the facts set

forth in paragraph 8 of this indictment.

5169

Klein, who had instructed them in his

invention. These four materia! facts

are, to a large extent, variations on the

same theme. But the indictment was

not fatally deficient because it broadly

alleged that “one or more” of the facts

material to the application were con-

cealed, and used the term “and/or” in

paragraph &b) in identifying the claims.

See Henslee v. United States, 5 Cir.

1959, 262 F.2d 750, cert. denied, 359 U.S.

984, 79 S.Ct. 942, 3 L.Ed.2d 933. Read

as a whole, the indictment was sufficient

to inform the defendant of the crime

with which he was charged, and to en-

able him to prepare a defense. The test

is not whether the indictment might

have been drawn with greater certainty

and exactitude, but rather whether it set

forth the elements of the offense

charged and sufficiently apprized the de-

fendant of the charges to prepare for.

United States v. Debrow, 1953, 346 U.S.

374, 378, 74 S.Ct. 113, 115, 98 L.Ed. 92,

96. The indictment sufficiently met the

applicable standards,‘ and no error oc-

curred when the pre-trial Motion to Dis-

miss it was denied.

SUFFICIENCY OF THE EVIDENCE

Our established standard for weighing

sufficiency of the evidence on a motion

for judgment of acquittal is that set

forth in United States v. Warner, 5 Cir.

1971, 441 F.2d 821, 825:

“. . . the test is whether taking

the view most favorable to the

Government, a reasonably-minded jury

could accept the relevant evidence as

adequate and sufficient to support the

conclusion of the defendant's guilt be-

yond a reasonable doubt. (citing

cases).”

UNITED STATES v. MARKHAM

See also, United States v. Smith, 5 Cir.

1975, 523 F.2d 771; United States v.

Amato, 5 Cir. 1974, 495 F.2d 545; United

States v. Edwards, 5 Cir. 1974, 488 F.2d

1154; United States v. Fontenot, 5 Cir.

1974, 483 F.2d 315. Appellant centers

his attack upon the charge that he

“knowingly and willfully” concealed and

covered up by a trick, scheme, or device

material facts relating to the patent ap-

plication, a matter within the jurisdic-

tion of an agency of the United States.

[4] “Knowingly” as used in § 1001

requires that the defendant acted “with

knowledge”. United States v. Smith, su-

pra; United States v. Mekjian, 5 Cir.

1975, 505 F.2d 1320, 1321; McBride v.

United States, 5 Cir. 1955, 225 F.2d 249.

“Willfully” means that the defendant

acted “deliberately and with knowledge”.

United States v. Smith, supra; United

States v. Mekjian, supra; United States

v. Parten, 5 Cir. 1972, 462 F.2d 430;

PfcBride v. United States, supra. This

record supports the conclusion that the

Government established Markham’s mens

rea with respect to the offense charged.

Initially, through the testimony of

Klein, the Government portrayed a long

term relationship of appellant with Klein

during which time it was a permissible

inference that Markham gained an

understanding of the developing Drycore

process. Significant incidents which per-

suasively further established this knowl-

edge included: (a) Klein’s giving Mark-

ham, in 1968, a copy of the plans from

which the Grand Prairie house would be

built, with the legend endorsed thereon

that they were based upon Orlando

Klein’s Drycore method; (b) Markham’s

actual inspection tour of the Grand Prai-

rie model home, which contained signs

proclaiming that it was produced by Or-

4. The defense sought and received a bill of particulars in the instant case.

ee sey WES. ees

UNITED STATES v. MARKHAM

lando Klein’s construction process; and

immediately after their argument in

September 1969, stating that the Dry-

core process was new, unique, and differ-

ent from the earlier patented process.

Shipley, Roberts, and Crowson each

testified to their meeting with Markham

in December 1969. This was the meet-

ing at which the disgruntled investors

assigned their rights as franchisees of

the Drycore system to a new corporation,

Dry-Therm, of which Markham was

president. The stated initial purpose of

this corporation was to protect the inves-

tors from the possibility that Klein’s in-

action would cause them to forfeit their

investment. This group built a Houston

model house, from Klein’s Grand Prairie

plans. Roberts testified that he, appel-

lant and possibly Shipley and Crowson

an advertising brochure at this

time titled “Dry-therm Insulated Homes,

Inc., patented, incorporating Drycore

Construction System” from the Grand

Preirie plans and a booklet prepared by

Klein to advertise the Drycore process.

The formation of the Dry-Therm corpo-

ration and the construction of the Hous-

ton model house, and the attendant cir-

cumstances, were sufficient basis for the

jury to reasonably conclude that Mark-

ham was not only familiar with the Dry-

core system itself, but knew that Shipley

and Roberts had obtained the knowledge

they possessed from their association

with Klein.

The implications from the meeting of

Markham, Roberts, Shipley and Crowson

with Markham’s patent attorney, Moore,

were a sound basis for attributing to

Markham full knowledge that the heart

of the new building system he attempted

to patent was based on Klein's ideas.

We view it as significant that Moore ad-

vised Markham that the 1957 patent af-

forded him no rights under the new sys-

tem, thus distinguishing the processes.

This was followed by Markham’s warn-

ing to the others present not to disclose

what they had learned.

Markham’s initial affidavit to the Pat-

ent Office, stating under oath his belief

that Shipley and Roberts were the sole

inventors of the process described, be-

comes damning in the light of this cir-

cumstance. His second affidavit, com-

plying with the Patent Office’s request

for a further showing of the necessity

for Markham’s affidavit in lieu of the

inventors’ oath from Roberts, stated that

a demonstration home had been built in

Grand Prairie using the method to be

patented. This inextricably tied the pat-

ent application to Klein’s process and its

product. While not mentioning Kleins

connection with the Grand Prairie house,

Markham in this affidavit termed Klein

a competitor and suggested that Roberts

might have leaked information of Dry-

Therm’s process to Kiein. This evidence

established the mens rea of appellant

sufficiently to persuade a reasonably-

minded jury beyond a reasonable doubt.

Even after being advised by the Patent

Yffice of Shipley’s and Roberts’ disclaim-

ers of inventorship, Markham submitted

an additional affidavit asserting Shipley

and Roberts to be the inventors.

The jury below acted upon abundantly

sufficient evidence in finding Markham

guilty.

{5} His counsel argues that Markham

was not a patent attorney, and relied

totally and in good faith upon Moore and

Crutsinger to prepare the application

from the information furnished by Ship-

ley and Roberts. Acceptance of this de-

fense would ignore the evidence and its

implications and reasonable inferences.

The two-pronged test of an effective re-

liance defense are good faith reliance of

5171

the defendant upon an expert after full

disclosure of relevant facts to that ex-

pert. United States v. Smith, supra;

Bursten v. United States, 5 Cir. 1968, 395

F.2d 976; United States v. Cox, 6 Cir.

1965, 348 F.2d 294; United States v.

Baldwin, 7 Cir. 1962, 307 F.2d 577, cert.

denied 1963, 371 U.S. 947, 83 S.Ct. 501, 9

L.Ed.2d 497. Markham withheld from

his patent attorneys any disclosure of

Klein's participation in the process to be

patented except for discussions of Klein's

earlier patent and allegations that Klein

was a “competitor”. Markham permit-

ted his patent attorneys to proceed in

ignorance of the facts to make represen-

tations which he well knew were both

incomplete and untrue.

THE CROSS-EXAMINATION OF

KLEIN AND CRUTSINGER

We proceed to examine appellant’s fi-

nal contention that the district court

erred in limiting his counsel’s cross-ex-

amination of Klein and Crutsinger.

During the direct examination of

Klein, government counsel inquired:

“Mr. Klein, let me ask you this. Did you

write voluminous letters to about every

agency in Washington trying to get

some relief from this situation?” Klein

answered, “[y]es, I did”. The defense

later proffered these letters in their en-

tirety as a basis for cross-examination of

Klein as to his bias and as showing

Markham’s lack of criminal intent by

demonstrating the adversary nature of

the proceedings before the Patent Office.

Appellant also urges that the letters

were relevant to show that the Patent

Office was aware of the dispute concern-

ing the true inventor of the building

process, and, at a later date, of the con-

flicting patent applications. This is evi-

dence, argues appellant, demonstrating

that there was no disposition on the part

UNITED STATES v. MARKHAM

of the Patent Office to rely on the infor-

mation in the Dry-Therm patent applica-

tion and accompanying affidavits, and

negating the materiality of the informa-

tion withheld from the Patent Office by

Markham. It was important to Mark-

ham’s defense, it is asserted, that these

matters be fully explored on cross-cxam-

ination.

Markham's counsel also tried to cross-

examine Klein in regard to a complaint

about Markham he had filed with the

Texas Bar Association Grievance Com-

mittee. That Committee had determined

that the proper place for Klein’s charges

was in civil court, not within the griev-

ance process established by the bar.

Both of these items, the letters and the

evidence relating to Klein’s charges filed

with the grievance committee, were

presented to the court in the form of a

proffer of evidence. Counsel for the

government and for the defense each ar-

gued their position regarding the evi-

dence before the court. The court ruled:

“I deny the Defendant's proffer of

evidence. As I have heretofore stated,

you can ask Mr. Klein what people he

wrote to in regard to Mr. Markham,

but we are not going into the details

of those letters or the appearance be-

fore the grievance committee or any-

thing else”.

The court subsequently modified its posi-

tion and ruled that it would permit Klein

to be questioned about the bringing of

grievance proceedings against Markham,

but not as to the disposition of the mat-

ter by the Grievance Committee, or the

proceedings before the committee.

{6} The scope of cross-examination is

a matter within the trial court’s sound

discretion. Error will be found only

upon a showing of abuse of that discre-

tion. See, Smith v. Illinois, 1968, 390

A la wang eo a

UNITED STATES v. MARKHAM

questioning still further, to the outer

limits of permissible inquiry.

[8] Appellant’s argument that the

letters were somehow relevant to show

that the Patent Office was fully in-

formed of the disputed inventorship of

5172

Government agents need not have been

actually deceived. See United States v.

McGough, 5 Cir. 1975, 510 F.2d 598;

United States v. Cole, 9 Cir. 1972, 469

F.2d 640; United States v. Jones, 8 Cir.

1972, 464 F.2d 1118, cert. denied, 409

U.S. 1111, 93 S.Ct. 920, 34 L.Ed.2d 682.

The proceedings before the Dallas

Grievance Committee were relevant only

to the issue of Klein's bias against Mark-

ham. This was shown by the filing of

the proceedings, which was admitted un-

der the supplementary ruling. The re-

sults of such proceedings are irrelevant

5173 UNITED STATES v. MARKHAM

“Testimony in the form of an opin-

ion or inference otherwise admissible

is not objectionable because it em-

braces an ultimate issue to be decided

by the trier of fact”.

Decision of whether the Rules applied

to the trial of these proceedings, Note 5,

supra, and whether Rule 704 supports

the right to put the quoted question,

need not detain us. That question was

no more than a rephrasing of questions

already put by defense counsel to the

witness, and answered by him without

objection. Crutsinger was asked (Trial

“Q. (By Mr. Daniel, defendant’s coun-

Q. Was there anything he said in

any of those conferences with

you that gave you any indication

that he thought that he was pre-

paring and signing a false patent

application?

Q. No.”

Regardless of the defense’s right vel

non to seek an answer to the question

objected to, it can scarcely be urged that

counsel had a right to put repetitious

questions to the witness, or that the re-

fusal to permit repetitive questioning of

the witness was erroneous. The reach

and thrust of the questions was identical.

No abuse of discretion occurred when

the trial court refused to permit further

examination on the subject.

Error is not made out as to the trial

court’s restrictions on the cross-examina-

tion of Klein and Crutsinger.

The judgment below was right. It is

AFFIRMED.

Adm. Office, U.S. Courts—West Publishing Company, Saint Paul, Minn.

Co ee Ee eee oe

Appendix 2

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF TEXAS

DALLAS DIVISION

Unrrep STATES OF AMERICA,

Vv.

E. L. MARKHAM JR.

Criminal No. 3-75-194

MOTION FOR A NEW TRIAL

The Court having considered the Defendant’s Motion for

New Trial pursuant to Rule 33 of Federal Rules of Criminal

Procedure, it is hereby

Orperep, ApsupcEep and Decreep that the motion be in all

things denied.

ENTERED this 18th day of September, 1975.

a oe.

ee ee

et A A CC

Appendix 3

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF TEXAS

DALLAS DIVISION

UNrrTep STATES OF AMERICA,

E. L. MARKHAM JR.

Criminal No. 3-75-194

The Grand Jury charges:

DEFENDANT

1. Epwarp L. MARKHAM JR., Esq. is named the defendant.

BACKGROUND OF OFFENSE CHARGED

2. In the late 1960’s Orlando F. Klein developed a building

prepare

a company to be named “Orlando F. Klein Drycore Systems,

Inc.” During September of 1969, the defendant acted as

Klein’s attorney. During this time and later, the defendant

was fully informed of the demonstration house at Grand

Prairie and of Mr. Klein’s intention to file a patent applica-

tion for the system used in building the demonstration house.

The defendant visited and inspected the demonstration

house in the fall of 1969. Subsequently, the defendant and

Klein had a disagreement and the defendant terminated

his employment as Klein’s attorney.

4. In the spring of 1970, the defendant engaged Howard E.

Moore and Gerald Crutsinger, two Dallas patent attorneys,

to prepare a patent application. The application described

and claimed as improvements in building construction the

system used by Klein in building the Grand Prairie demon-

stration house. The application designated Roberts and Ship-

ley as the only inventors of the improvements; MARKHAM

had previously had Roberts and Shipley agree to assign all

their interest in inventions to a corporation that MARKHAM

controlled. Shipley signed the inventor’s oath for the patent

application, ~Ahout knowing or being informed that the

application contained claims to the system that Klein had

taught him, and that it named Shipley as the first inventor

(along with Roberts) of such claims to Klein’s system. The

defendant then attempted to obtain the signature of Roberts

to an inventor’s oath for the application also, but he refused

to sign.

5. After Roberts refused to sign the patent application,

the defendant read the application and signed his own state-

ment under oath as president of the corporation that was

assignee of Roberts and Shipley. The statement asserted

that the defendant believed Roberts and Shipley to be the

original and first inventors of the improvements claimed

in the application. Defendant then caused this sworn state-

ment to be filed in the United States Patent Office on or

about June 1, 1970.

6. Later, the officials of the Patent Office conducted an

investigation into the facts surrounding the filing of the

patent application and Robert’s refusal to sign it as inventor.

During the investigation the defendant caused various mis-

leading statements to be filed and again signed a statement

under oath that he believed Shipley and Roberts to be the

original inventors of the improvements claimed in the

application.

Il.

OFFENSE CHARGED

7. Beginning on or about June 1, 1970, and continuing

thereafter until on or about October 1973, the defendant

MaRKHAM knowingly, wilfully, anc in violation of Title

18, United States Code, Section 1001, concealed and covered

up by a trick, scheme and device material facts relating to

the aforesaid patent application (a matter within the juris-

diction of the Patent Office, an agency of the United States).

8. In furtherance and pursuance of such violation, the

defendant knew and covered up one or more material facts

as set forth more particularly as follows:

(a) Defendant knew and covered up the fact that

Edris Roberts and Billy J. Shipley were not the original

and first inventors of all of the improvements or subject

matter described and claimed in the patent application;

(b) Defendant knew and covered up the fact that

Edris Roberts and Billy J. Shipley made no inventive

contribution at all to some of the improvements or sub-

ject matter described and claimed in the patent applica-

tion, including that covered by one or more of the follow-

ing claims: 14, 17, 22 and/or 24:

Orlando F. Klein invented, discovered, or knew of the

improvements or subject matter claimed in one or

more of the claims of the patent application, and Klein

did so before Edris Roberts and Billy J. Shipley;

(d) Defendant knew and covered up the fact that

Edris Roberts and Billy J. Shipley had worked with

Klein and learned of his invention, discovery, or know]-

edge or such improvements while he was instructing

them in constructing the demonstration house in Grand

Prairie, Texas.

9. In furtherance and pursuance of such violation, the

defendant did, among other things, the following:

(a) On or about June 1, 1970, defendant caused a

patent application to be filed in the Patent Office naming

Roberts and Shipley as inventors, among other things,

of the system Klein had taught them; and defendant

did this after he had secured from Roberts and Shipley

an assignment of their entire interest in the application

to a corporation he controlled.

(b) On or about June 1, 1970, defendant asserted

the following in a statement under oath he signed and

caused to be filed with the Patent Office in regard to

the aforesaid patent application:

* * * I do verily believe the said Edris Roberts to

be the original, first and joint inventor with Billy J.

Shipley of the improvements in BuiLpInc Con-

STRUCTION described and claimed in the annexed

specification; * * *

By these assertions, defendant intended to convey to

the Patent Office the impression that Roberts and Ship-

ley were the original and first inventors of all of the im-

provements claimed in the application.

the following in a statement under oath he signed and

caused to be filed with the United States Patent Office

in regard to the aforesaid patent application:

My present belief is that Epris Roserts and BiLLy

J. SHIPLEY are the original and joint inventors

of the subject matter described and claimed in the

above indicated application.

By these assertions, defendant intended to convey to

the Patent Office the impression that Roberts and

Shipley were the original inventors of all the subject

matter claimed in the aforesaid patent application;

(d) During the period of time from approximately

June 1, 1970, through approximately October 1973, de-

ee ee

fendant failed to inform the Patent Office of one or

more of the facts set forth in paragraph 8 of this indict-

ment.

Ill.

JURISDICTION AND VENUE

10. The aforesaid offense has been carried out in part

within the Dallas Division of the Northern District of Texas

and within the jurisdiction of this Court, within five years

next preceding the filing of this indictment.

A violation of Title 18, United States Code, Section 1001.

A TRUE BILL.

GLENN LINDON.

Foreman

Frank D. McCown

United States Attorney

. i =a

Harry Koch, Assistant

United States Attorney

Room 16G28, 1100 Commerce

Dallas, Texas 75202

Telephone 214-749-3491

WILLIAM E. JACKSON

William E. Jackson, Attorney

Department of Justice

Washington, D. C.

Certified a true copy of an instrument on file in my office

on 5-27-75. JosepH McE roy, Jr., Clerk, U.S. District Court,

Northern District of Texas by Barbara Whaley, Deputy.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.