# Petition for Writ of Certiorari — Hornback v. United States > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386005_1186%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1994 - **Citation:** 511 U.S. 1070 ## Text 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 - iii - 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---------- - al - 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 - O22 « 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 - a3 - 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) KkKKKKKKKKKKKKKKKKKKKhKkKhKhKkkhhhhkhhhkhkehheehekhheheere Note: Pursuant to Fed. Cir. R. 47.6, this Order is not citable as precedent. It is a public record. KkakkKKKKKKKKKKKKKKKkhhkhkkkhhhhhkhhhhhhhhkekeeee - a6 - --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386005_1186%3A1. Public record. Not legal advice.