Petition for Writ of Certiorari — Hornback v. United States

931391 FER 41994

“OFFICE OF THE CLERK

NO

In The

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1993

ALTON B. HORNBACK,

Petitioner,

Vv.

UNITED STATES OF AMERICA,

Respondent.

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

PETITION FOR A WRIT OF CERTIORARI

ALTON B. HORNBACK

Petitioner, Pro Se

5650 Bloch Street

San Diego, CA 92122

(619) 453-3334

22 February 1994

QUESTIONS PRESENTED

1. Is CLASSIFIED information in a patent

application U.S. Government property?

a Does the acquisition, by the U.S.

Government, of a “proprietary interest" in

privately developed information as a

prerequisite to its classification, constitute

an eminent domain "taking" of that

information?

Je Can the U.S. Government lawfully

deprive a U.S. ecitisen of the right te

disclose, and to possess, the privately

developed information in his own _ patent

application, while it retains physical

possession of, and the right to use, that same

information, but without awarding "just

compensation" for the Fifth Amendment "taking"

of the intellectual property rights to that

information?

|

TABLE OF CONTENTS

I. QUESTIONS PRESENTED--------------- g é

II. JURISDICTION----------------.----- 2

ITI. CONSTITUTIONAL PROVISIONS,

STATUTES, REGULATIONS AND

AUTHORITI ES--------------~~----.-~- 2

IV. STATEMENT OF CASE AND

PERTINENT FACTS------------------- 7

¥V. ARGUMENT-~--...................--.-- 10

VI. REASONS FOR ALLOWANCE OF WRIT----- 12

VII. APPENDIX-------------------------- al

TABLE OF AUTHORITIES

Constitutional Provisions

1. Fifth Amendment --------------- 2,passim

Statutes

i. 35 U.S.C. §181---------------- 2,passim

2. 35 U.S.C. §183---------------- 3,passim

Cases

1. James v. Campbell (1882) 104

US 356 26L Ed 786------------------- 12

2. Leesona Corp. v. United States

(1979) 220 Ct.Cl. 234 599 F.2d 958-- 12

Regulations and Other Authorities

l. 32 C.F.R. §159a.15(e)(3)--------- 3,10,11

2. Executive Order 12356 ----------- 4,passim

»- ii «=

Pg.

‘ P Industrial Security Manual for

Safeguarding Classified

Information (ISM)--------------- 4,passim

4. Secrecy Orders------------------ 5,passim

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NO.

In The

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1993

ALTON B. HORNBACK,

Petitioner,

V.

UNITED STATES OF AMERICA,

Respondent.

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

The petitioner, Alton B. Hornback,

respectfully prays that a writ of

certiorari issue to review the DECISION

of the United States Court of Appeals

for the Federal Circuit.

oe te

II

JURISDICTION

1. This PETITION FOR WRIT OF CERTIORARI

is submitted pursuant to Rule 10.1(c).

\ - Date of entry of judgement to be

reviewed: 22 December 1993, (Appendix A).

3 Date rehearing denied: 25 January

1994, (Appendix B).

4. This Court has jurisdiction to review

the judgement in question pursuant to 28

0.8.C. 91254.

lil

CONSTITUTIONAL PROVISIONS, STATUTES,

REGULATIONS AND AUTHORITIES

1. Fifth Amendment, (Pertinent Text)

[nJor shall private property be taken |

for public use, without just

compensation.

2. 35 U.S.C. §181. Secrecy‘) of

Certain Inventions and Withholding

of Patent, (Pertinent Text)

If, in the opinion...of the Secretary

of a Defense Department...the publication

or disclosure of the invention by the

granting of a patent therefor would be

(1) This is irrelevant to the classification

of SECRET within the meaning of E.0O. 12356.

—

ee

detrimental to the national

security...the Secretary of a Defense

Department...shall notify the

Commissioner and the Commissioner shall

order that the invention be kept secret

and shall withhold the grant of a patent

for such period as the national interest

requires and notify the applicant

thereof.

. 35 U.S.C. §183. Right to

Compensation, (Pertinent Text)

An applicant...whose patent is

withheld...shall have the right...to

apply to the head of any department or

agency who caused the order to be issued

for compensation for the damage caused by

the order of secrecy and/or for the use

of the invention by the Government,

resulting from his disclosure...A

Claimant may bring suit against the

United States...in the District Court of

the United States of tthe district in

which such claimant is a resident for an

amount which...shall constitute just

compensation for the damage and/or use of

the invention by the Government.

4.32C.F.R. §159a.15(e) (3)

A product of nongovernment research

and development that does not incorporate

Or reveal classified information to which

the producer or developer was given prior

access may not’ be classified until and

unless the government acquires a

proprietary interest in the _ product.

This prohibition does not affect the

provisions of the Patent Secrecy Act of

1952.

5. Executive Order 12356, (Excerpts)

(a) Definition of "National Security

(CLASSIFIED) Information

6.1(b) "Information" means any

information or material, regardless of

its physical form or characteristics,

that is owned by, produced by or for, or

is under the control of the United States

Government.

6.1(c) "National security

information" means information that has

been determined pursuant to this Order or

any predecessor orde. to require

protection against unauthorized

disclosure and that is so designated.

(b) Definition of SECRET

Classification

l.la(2) "Secret" shall be applied

to information, the unauthorized

disclosure of which reasonably could be

expected to cause serious damage to the

national security.

6. Industria’ <2" Security Manual for

Safeguarding Classified Information

(ISM), (Pertinent Text)

(2) The ISM is geared exclusively to the }

"military-industrial complex"; it makes no

provision for a private citizen to possess,

disclose, store, or transmit classified

information.

(a) Section 4-105, (Excerpts)

It should be noted, however, that

E.O. 12356 prohibits a User Agency from

Classifying information over which the

Government has no jurisdiction.

The...material submitted may not’ be

Classified by a User Agency unless...the

Government first acquires a proprietary

interest in the information.

(b) Section 2-100(c)

Before contractors are eligible for

custody (possession) of classified

material, in addition to an FCL, they

must have proper storage capability

approved by the CSO and be prepared to

apply other safeguards as required by

this Manual.

(c) Section 5-513, (Excerpts)

Contractors may disclose classified

information during visits provided the

visit is necessary for a government

purpose; the parties involved possess the

appropriate clearances and have a

need-to-know for the Classified

information; appropriate security

measures are taken aS necessary to

preclude unauthorized disclosure of

Classified information; and the number of

Classified visits is held to a minimum

consistent with contractual requirements.

7. Secrecy Orders, (Pertinent Text)

(a) 1987-1993, (Excerpts)

Publication Or disclosure of the

subject matter of the above-identified

patent application...may subject the

rae ie

ee

person publishing or disclosing the

subject matter to the penalties of 35

U.S.C. 182, 185 and 186 (1951).

The subject matter of the

above-identified application has_ been

determined to be encompassed by...E.O.

12356...and thus is subject to the (ISM).

(b) Current, 1993--, (Excerpts)

The subject matter of this

application is:

[xX] CLASSIFIED

at the level of: SECRET

[ ]}] Not classified

but would .

be CLASSIFIABLE!!)

at the level of:

Footnote

(1) The term "classifiable" as used

herein designates subject matter that is

not actually classified but is considered

sufficiently sensitive...to have been

properly classified under E.0. 12356 if

the subject matter were owned by the U.S.

government.

IV

STATEMENT OF CASE AND PERTINENT FACTS

Le On 25 April 1986, Petitioner filed

with the Patent and Trademark Office (PTO) a

patent application, S/N 06/859,033 titled

"Real Time Boresight Error Slope Sensor" -- a

device to improve the cost/effectiveness of a

missile such as the Patriot which uses a radar

terminal homing seeker, or the HARM when used

against moving targets.

2. On 16 April 1987, the U.S. Air Force

Classified the subject matter in that

application at the level of SECRET pursuant to

E.O. 12356. That subject matter remains so

Classified.

Je On 27 May 1987, the PTO issued a

document Stating that, except for

Classification markings, the application was

in condition for allowance.

4. On 24 August 1987, the PTO issued a

SECRECY ORDER on the application stating that

the subject matter was encompassed by E.O.

12356 and its implementing directive, the

ig. a

“a . ;

Z rr ie

~

i

"Industrial Security Manual for Safeguarding

Classified Information" (ISM). The SECRECY

ORDER remains in effect.

5. On 28 August 1987, Petitioner filed

an administrative claim with the U.S. Air

Force, pursuant to }§33 U.8.C. §163, tor

$10,000,000.

6. On 17 September 1987, the PTO issued

a NOTICE OF ALLOWABILITY stating that "...in

view of the secrecy order issued August 24,

1987 under 35 U.S.C.(1952) 181, this

application will be withheld from issue during

such period as the national interest

requires".

ir On 29 January 1988, Petitioner lost

his security clearance (top secret, secret,

confidential) solely as a result of

retirement.

—~+—— .

8. On 29 September 1988, the

administrative claim was denied.

9. On 22 December 1989, suit was filed

in District Court pursuant to 35 USC 183. On

2 October 1992, District Court granted the

a

Government's MOTION FOR SUMMARY JUDGEMENT,

effectively dismissing the case. Ga kB:

October 1992, Petitioner moved for

RECONSIDERATION. On 18 December 1992 that

motion was denied.

10. On 14 January 1993, Petitioner filed

NOTICE OF APPEAL in U.S.Court of Appeals for

the Ninth Circuit. Appeal was transferred to

U.S. Court of Appeals for the Federal Circuit

on 16 July 1993. On 22 December 1993, the

Federal Circuit Court of Appeals affirmed

District Court's ORDER GRANTING SUMMARY

JUDGEMENT, (Appendix A). And on 29 December

1993 Petitioner filed PETITION FOR REHEARING.

On 25 January 1994 that PETITION was denied,

(Appendix B).

ll. Basis for Federal Jurisdiction

in Court of First Instance

The statutory basis for this action in

district court is 35 U.S.C. §183. The basis

for jurisdiction in the District Court in the

Southern District of California is that

Petitioner is now, and for the past 32 years

a oe

has been, a legal resident of San Diego

County, California, which is encompassed by

the Southern District of California.

V

ARGUMENT

The current SECRECY ORDER specifies that

the subject matter in Petitioner's patent

application is CLASSIFIED SECRET, as opposed

to being simply "classifiable". It goes on to

define "Classifiable" Subject matter as

"Subject matter that is not actually

Classified but is considered sufficiently

sensitive...to have been properly classified

under E.O. 12356 if the subject matter were

owned by the U.S. government”. (emphasis

added). This indicates that information which

has actually been CLASSIFIED is, ipso facto,

“owned by the U.S. government". This

interpretation is reinforced by the

requirement in both Section 4-105 of the ISM

and 32 C.F.R. 159a.15(e)(3) that privately

developed information may not be classified

unless the Government first acquires a

——? oe

OO)

"proprietary interest" in that information.

Accordingly, Petitioner contends that the

SECRECY ORDER, the ISM, and the C.F.R. all

provide authority for an eminent domain

"taking" claim within the framework of 35

U.S.C. §183 and that that "taking" is the

damage caused by the SECRECY ORDER.

Despite the fact that the subject matter

has been classified SECRET and the patent

withheld for over 6 years, the Government,

nevertheless, argues that Petitioner is not

entitled to any compensation whatsoever,

because: (i) there was no "taking" because

the Government lacks Jurisdiction over

privately developed information, and

therefore, the classification was invalid,

(ii) a Fifth Amendment "taking" argument is

inappropriate because 35 USC 183 provides the

exclusive remedy for damage caused by a

secrecy order, and (iii) case law requires a

showing of “actual” damage for recovery under

ao Bee: 383. With that first argument, all

eminent domain condemnations would be invalid!

Moreover, the SECRECY ORDER, which is based on

that alleged invalid classification, has been

renewed each year since 1987.

VI

REASONS FOR ALLOWANCE OF WRIT

Over 100 years ago, in James v. Campbell

(1882) 104 US 356 26L Ed 786, the court held:

"United States could not appropriate or use

invention without just compensation, in any

different way than it could appropriate er ase

any other article owned by a private citizen".

Also in Leesona Corp. v. United States (1979)

220 Ct.Cl. 234, 599 F.2d 958, the court held:

"[w]hen the government has infringed, it is

deemed to have '‘'taken' patent license under

eminent domain theory, and compensation is

just compensation required by Fifth

Amendment". However, no precedent has been

cited which addresses the issue of the

acquisition of a "proprietary interest" in the

information in a patent application as a

arerequisite to its classification.

Although the DECISION by Appeals Court

iy), ee

makes frequent reference to the secrecy order,

it is totally devoid of any language

addressing the cardinal issue of

Classification, including the very fact of the

Classification itself. This, together with

the absolute silence by both Appeals Court and

District Court regarding Executive Order

12356, suggests that the issue of

Classification and the acquisition of a

"proprietary interest" in privately developed

information as a prerequisite to that

Classification were too onerous’ for either

lower Court to handle. The Courts here must

do much more than simply take "judicial

notice" of an executive order; the secrecy

Order, by an Act of Congress, provides for

heavy civil and Criminal penalties for

violation of Executive Order 12356.

If that DECISION is allowed to stand, the

Government henceforth will be able,

indefinitely, to appropriate and use any

invention described in a pending patent

application while circumventing the "just

“>; oo

compensation" clause of the Fifth Amendment by

using the following four-step procedure: (i)

Classify that patent application pursuant to

E.O. 12356 before applicant has expended funds

otherwise recoverable as "actual" damage and,

with that classification, insure that an

uncleared applicant can not prove unauthorized

use. (ii) Impose a secrecy order on that

application pursuant to 35 U.S.C. 181 which

prohibits, under heavy civil and criminal

penalties, an uncleared inventor from

possessing or disclosing the information in

his own patent application,- and which

withholds the patent from issue “during such

period as the national interest requires".

(iii) Argue that a Fifth Amendment "taking"

argument is inappropriate because 35 U.S.C.

§183 provides the exclusive remedy for damage

caused by a secrecy order. (iv) And then

assert that applicant has shown no proof of

use or “actual” damage allegedly required by

35 U.S.C. §183 - a fact guaranteed by the

Government's preemptive strike in Step (i)}.

—.

With the foregoing procedure the

Government, for over 6 years, has successfully

avoided the payment of any compensation

whatsoever to Petitioner for his valuable

contribution to the science of missile

guidance.

WHEREFORE, this Petitioner respectfully

pleads for the mercy of this Court to reverse

the DECISION of the U.S. Court of Appeals for

the Federal Circuit dated 22 December 1993

which grants the United Stated Government a

license to circumvent the "just compensation"

Clause of the Fifth Amendment whenever that

Government wishes to appropriate or use an

invention described in a pending patent

application.

Date 199 _Libbn BMertback

Alton B. Hornback

Petitioner, Pro Se

VIII

APPENDIX

DECISION, U.S. Court of Appeals

for the Federal Circuit, Dated

24 BDOeCGenber T9OS cceeaenscecenancesce

ORDER DENYING REHEARING

Dated 25 January 1994----------

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APPENDIX A

NOTE: Pursuant to Fed. a ea ys F

this disposition is not citable as

precedent. It is a public record. The

disposition will appear in tables

published periodically.

United States Court of Appeals

for the Federal Circuit

93-1462

ALTON B. HORNBACK,

Plaintiff-Appellant

Vv.

THE UNITED STATES,

Defendant-Appellee.

DECIDED: December 22, 1993

Before ARCHER, Circuit Judge, COWEN, Senior

Circuit Judge, and MAYER, Circuit Judge.

PER CURIAM

DECISION

Mr. Hornback appeals from an order of

the United States District Court for the

Southern District of California, entered

October 2, 1992, in Civil Action No.

89-1914-R-(M), which dismissed his complaint

and granted summary judgment in favor of the

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United States. On December 18, 1992, the

district court denied Hornback's motion for

reconsideration of the order granting summary

judgment (Civil Action No. 89-1914-R(P).

In April, 1986, the United States Patent

and Trademark Office (PTO) received a patent

application for a missile guidance system

designed by Hornback. At the request of the

Air Force, the PTO issued a secrecy order on

Hornback's patent application on August 24,

1987. The secrecy order is still in effect

and prohibits the publication or disclosure

of the subject matter of the application to

any person, except those specifically

authorized in the order or those having the

requisite clearances on a need-to-know basis.

In August, 1987, Hornback submitted a

Claim to the Air Force under 35 U.S.C. §183,

for damages allegedly caused by the secrecy

order. The claim was denied on September 29,

1988.

Hornback then filed his complaint in the

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district court under 35 U.S.C. §183 for use

of the invention and also for damages caused

by the secrecy order. Under a stipulation

which was incorporated in the court's order,

Hornback formally elected not to pursue his

Claim for use of his invention by the United

States for as long as_ the secrecy order

imposed on his pending patent application

remains in effect. As a result, the parties

agreed that the action in the district court

would proceed solely on Hornback's claim for

damages allegedly caused by the secrecy

Order.

The district court held: (1) Mr.

Hornback failed to present a genuine issue of

fact regarding the damages claimed by him,

and (2) his Fifth Amendment taking argument

is inappropriate, because 35 U.S.C. §183

provides the exclusive remedy to

inventor-owners for damages claimed as the

result of a secrecy order imposed by the

government.

After a careful review of the record in

this case, we affirm the decision of the

district court on the basis of the district

court's order of October 2, 1992.

93-1462 _

APPENDIX B

United States Court of Appeals

for the Federal Circuit

ORDER

Before ARCHER, Circuit Judge, COWEN, Senior

Circuit Judge, and MAYER, Circuit Judge.

A petition for rehearing having been

filed by the APPELLANT,

UPON CONSIDERATION THEREOF, it is

ORDERED that the petition for rehearing

ce, and the same hereby is, DENIED.

The mandate will issue February 1, 1994.

FOR THE COURT,

FRANCIS X. GINDHART,

CLERK

by {[s/

Diane M. Frye

Chief Deputy Clerk

Dated: January 25, 1994

cc: ALTON B. HORNBACK STAMP

EDWARD H. RICE

Jan 25 1994

HORNBACK V US, 93-1462

(DCT - 89-CV-1914)

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Note: Pursuant to Fed. Cir. R. 47.6, this

Order is not citable as precedent. It is a

public record.

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