# Petition for Writ of Certiorari — Hornback v. United States

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386016_0307%3A1

## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 2005
- **Citation:** 546 U.S. 1016

## Text

4
ARGUMENT FOR ALLOWANCE OF THE WRIT

1. Abuse of the Power of Eminent Domain
(Question 1)

If certiorari is denied, the Government will, thereby, be
emboldened to take amy property it desires without
compensation, simply by invoking national security,
classifying that property at the level of SECRET, revoking the
owner’s security clearance, if any, and then declariug the
taking to be an intentional tort.

The Government has no authority, whatsoever, to classify
private property, and thereby, deprive a private citizen with
no personnel of facility security clearance, the right of access
to his own property.

The Invention Secrecy Act (35 U.S.C. 181-188) requires
only that the subject matter be kept“secret” as the word is
usually defined. That is a far cry from being classified
“SECRET” as defined in Section 1.1 (a2) of Executive
Order 12356. Moreover, that Act was enacted in 1952.
Therefore, in 1952, Congress did not authorize, and could not
have authorized, a Secrecy Order which mandated compliance
with Executive Order 12356 and its implementing directive,
the ISM, neither of which even existed until 1982. The
specifications in the 1987 Secrecy Order which mandated
compliance with those authorities (45a) were, therefore,
clearly illegal.

The clause in the Secrecy Order following the words “(as
required by 35 U.S.C. 181)” which reads: “and you are
further ordered ... “ (45a, emphasis added) is prima facie
evidence that such authority does not flow from that statute.
And no Court has ever held otherwise.

8

Moreover, the implementing directive for Executive Order
12356, itself, states that the Government may not classify
privately developed information unless “the Government first
acquires a proprietary interest in the information” . (40a).

Finally, such a taking without compensation violates this
Court’s own precedent. See First English Evangelical
Lutheran Church of Glendale v. County of Los Angeles, 482
U.S. 305 (1987): “But where the government’s activities have
already worked a taking of all use of property, no subsequent
action by the government can relieve it of the duty to provide
effective” .

2. Temporary Taking NOT an “Intentional” Tort
(Ouestion 2)

The Governmental act which gave rise to the tortious
“temporary” takings claim (Claim 1, 42a) was the illegal
specification in the 1987 Secrecy Order (44a) which was not
rescinded until 1999 (48a), that the patent application was “To
be protected at the Classification Level of Secret”. Since
Petitioner is a private citizen with no personnel or facility
security clearance, he could not possibly comply with that
requirement. The Government, therefore, took physical
possession of the subject matter in the patent application for
safeguarding and denied Petitioner all access to it during the

2-year period that specification was in effect.

Black’s LAW DICTIONARY defines “intentional tort” as
“a tort in which the actor is expressly or impliedly judged to
have possessed intent or purpose to injure”. Clearly, the
requirement that the subject matter in the patent application
was “To be protected at the Classification Level of Secret”,
neither expressed nor implied any intent or purpose to injure

9

Petitioner. Quite the contrary! That requirement was imposed
precisely to prevent injury to the entire nation, of which
Petitioner -- and indeed, this very Court -- is a part. That
conclusion follows from the definition of the classification
level of SECRET, as set forth in Section |.1(a)(2) of Executive
Order 12356 (emphasis added):

“Secret” shall be applied to information, the
unauthorized disclosure of which reasonably could be
expected to cause serious damage to the national
security.

3. Finding of “Intentional” Tort Unsupported
(Question 3)

In its MEMORANDUM (4a), the Ninth Circuit simply
asserted, ipse dixit, that the tortious taking was an “intentional
tort”, and therefore, the tortious takings claim was barred
pursuant to 28 U.S.C. 2680(h). If such an unsupported
finding is allowed to prevail, any Court could circumvent this
Court's precedent simply by declaring a “temporary” taking
to be an “intentional tort”. In First English Evangelical
Lutheran Church of Glendale v. County of Los Angeles,
California, 482 U.S. 305 (1987), this Court held: “But where
the government's activities have already worked a taking of
all use of property, no subsequent action by the government
can relieve it of the duty to provide compensation for the
period during which the taking was effective” .

4. Fifth Amendment Taking is NOT a Tort
(Question 4)

In its ORDER (22a, Analysis) dismissing the
COMPLAINT, District Court willfully and knowingly
misrepresented the cause of action by stating:

—

10

In this case Plaintiff brings two distinct claims against
the Defendant: (1) a “temporary” taking claim based
on Defendant’s alleged taking of Plaintiff's intellectual
property over a twelve year period; and (2) a Federal
Tort Claims Act for the “tortious acts committed
during the course of the taking which include fraud,
conspiracy to defraud, perjury, and the suppression of
evidence of those acts”. Complaint, p. 1

That statement indicates that: (i) the takings claim was not a
tortious takings claim; and (ii) that claim was not filed under
the Federal Tort Claims Act (FTCA). Both are false!

Both claims were, indeed, filed under the FTCA. And the

takings claim was not for just a “temporary” taking; it was for

a tortious “temporary” taking. (42a). That misrepresentation
of the cause of action was clearly willful in order to support

the finding (26a) that the taking was a Fifth Amendment
taking, thereby enabling the Court to invoke the doctrine of
res judicata to bar the takings claim.

However, nowhere in the COMPLAINT nor in any
subsequent brief, did Petitioner even mention the Fifth
Amendment. The Fifth Amendment states: “nor shall private
property be taken for public use without just compensation” .
(Emphasis added). But the property was NOT taken “for
public use”. Quite the contrary! /t was taken, without
compensation, precisely to prevent ANY use, except use by the
Government, by classifying that property at the level of
SECRET in violation of Executive Order 12356. (40a).
Therefore, the taking was a “tortious” taking, not a Fifth
Amendment taking.

Since a Fifth Amendment taking is not a tort, the Ninth
Circuit clearly contradicted itself by affirming District Court's

il
finding that the taking was a Fifth Amendment taking, after
holding that the “tortious” taking was an “intentional tort”.
(4a).
CONCLUSION

WHEREFORE, PETITION FOR WRIT OF
CERTIORARI should be granted.

Respectfully submitted,

Alton B. Hornback
5650 Bloch Street
San Diego, CA 92122
(858) 453-3334

la

APPENDIX A

UNITED STATES COURT OF APPEALS
} FOR THE NINTH CIRCUIT

No. 04-57057
D.C. No. CV-04-00339-WQH
[Filed July 28, 2005]

ALTON HORNBACK,
Plaintiff- Appellant,

v.

UNITED STATES OF
AMERICA,
Defendant - Appellee.

Nee ee eee eee ee”

ORDER
Before: B. FLETCHER, TROTT, and PAEZ, Circuit Judges

The panel has voted to deny the petition for panel
rehearing.

The full court has been advised of the petition for
rehearing en banc and no judge has requested a vote on
whether to rehear the matter en banc. See Fed. R. App. P. 35.

2a

The petition for panel rehearing and the petition for
rehearing en banc are denied.

No further filings will be accepted in this closed case.

3a

APPENDIX B

UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT

No. 04-57057
D.C. No. CV-04-00339-WQH

[Filed April 13, 2005}

ALTON HORNBACK,
Plaintiff- Appeliant,

v.

UNITED STATES OF
AMERICA,
Defendant - Appellee.

ee

MEMORANDUM’

Appeal from the United States District Court for the _
Southern District of California William Q. Hayes,
District Judge, Presiding

* This disposition is not appropriate for publication and may not be
cited to or by the courts of this circuit except as provided by Ninth
Circuit Rule 36-3.

4a
Submitted March 23, 2005
B. FLETCHER, TROTT, and PAEZ, Circuit Judges.

Alton B. Hornback appeals pro se the district court’s
dismissal of his action alleging the United States violated the
Federal Tort Claims Act (“FTCA”) in processing his patent
application. We have jurisdiction under 28 U.S.C. § 1291.
We review de novo. O'Toole v. United States, 295 F.3d
1029, 1032 (9th Cir. 2002) (dismissals for lack of subject
matter jurisdiction under the FTCA); Stewart v. U.S.
Baneorp, 297 F.3d 953,956 (9th Cir. 2002) (dismissals based
on res judicata). We affirm.

The district court properly determined it lacked subject
matter jurisdiction over this action, because Hornback’s
claims based on the alleged fraudulent behavior defendants
exhibited and tortious taking they effected during the time his
patent application was held under a secrecy order constitute
intentional torts to which the FTCA does not apply. See
Owyhee Grazing Ass'n, Inc. v. Field, F.2d 694, 697 (9th Cir.
1981) (fraud, conspiracy, and misrepresentation amongst
tortious conduct for which the United Sta. : has not consented
to be sued, as provided by 28 U.S.C. § 2680(h)).

To the extent the district court construed Hornback’s
temporary takings claim to allege a violation of the Fifth
Amendment, this claim had been dismissed in a previous
action. Hornback v. United States, 91 Fed. Appx. 679, 681-
82 (Fed. Cir. 2004) (per curiam) (nonprecedential).

“ The panel unanimously finds this case suitable for decision
without oral argument. See Fed. R. App. P. 34(a)(2).

Sa

Accordingly, the district court properly dismissed the takings
claim based on res judicata. See Stewart, 297 F.3d at 956.

We find Hornback’s remaining contentions unpersuasive.

AFFIRMED.

APPENDIX C

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA

Civil No.04-CV0339-WQH (Wmc)

[Filed November 9, 2005]

ALTON B. HORNBACK,
Plaintiff,

-

UNITED STATES OF
AMERICA

)
)
)
)
)
)
)
Defendants. )
)

ORDER RE: PLAINTIFF’S MOTION FOR
RECONSIDERATION [Doe. No. 14]

Plaintiff Alton B. Hornback (“Plaintiff or “Hornback”)
moves this Court for reconsideration of it’s Order of August
19, 2004 denying Plaintiff's motion for summary judgment
and granting Defendant's motion to dismiss. The Court finds
the resolution of this motion suitable for decision on the
parties’ papers without oral argument, pursuant to Local Civil
Rule 7.1(d)(1). hen

7a

I. Introduction

On February 12, 2004, Plaintiff filed a complaint for
damages pursuant to the Federal Tort Claims Act seeking
damages and compensation in the amount of $12,000,000.00.
Plaintiff's complaint arises out of his claim that Defendant
improperly imposed one or more secrecy orders on his patent
application for an invention called a “Real-Time Boresight
Error Slope Sensor.” Plaintiff claims the secrecy orders
effected a temporary taking of his intellectual property rights
for which he was not adequately compensaced. Plaintiff has
extensively litigated his claims in this and other forums. In
fact, Plaintiff has filed at least ten actions asserting various
grounds of recovery against Defendant.’

On August 19, 2004, the Court issued an order denying
Plaintiff's motion for summary judgment and granting
Defendant’s motion to dismiss. Plaintiff now moves to
reconsider that order. Plaintiff states that his motion for
reconsideration is based on (I) “the misapprehension of the
nature of the takings claim”; (2) “the premise that the
doctrines of res jadicata [sic] and stare decisis fall asunder,
where, as here, it is conclusively established that the previous
decisions were in error”; and (3) Plaintiff argues that the
denial of his motion for summary judgment was in error.
Plaintiff's Amend. Mot., p. 1.

Il. Legal Standard

Absent “highly unusual circumstances,” reconsideration
is appropriate only where (1) the court is presented with

' A detailed description of Plaintiff's prior litigation history is
included in this Court’s August 19, 2004 Order.

8a

newly-discovered evidence or (2) the court “committed clear
error or the initial decision was manifestly unjust” or (3) there
is an intervening change in controlling law. School Dist. No.
IJ, Multnomah County v. AC and S, Inc., 5 F.3d 1255, 1263
(9th Cir. 1993); United States v. James, 915 F. Supp. 1092,
1098 (S.D. Cal. 1995). “[RJeargument should not be used as
a means to argue new facts or issues that inexcusably were not
presented to the court in the matter previously decided.”
Bhatnagar v. Surrendra Overseas, Lid., 52 F.3d 1220, 1231
(3d Cir. 1995).

Ill. Discussion

Plaintiff's first asserted ground for reconsideration is that
the Court made a mi: .ake in it’s ruling because Plaintiff is not
claiming a Fifth Amendment taking, rather he is asserting a
“tortious” taking claim. As discussed in the August 19, 2004
Order, the problem for Plaintiff is that the United States has
not waived it’s sovereign immunity to claims arising out of
misrepresentation and deceit. 28 U.S.C. § 2680(h). Plaintiff
alleges that Defendant committed severa! acts constituting
fraud during the pendency of the secrecy order on Plaintiff's
patent application. Therefore, to the extent Plaintiff is alleging
a tortious taking those allegations fall squarely within the
prohibition of 28 U.S.C. § 2680(h). Therefore, Plaintiff's
tortious takings claims fail.

Plaintiff's second argument in support of his motion for
reconsideration is that this Court erred by improperly
applying the doctrine of res judicata to bar his temporary
takings claim. Plaintiff argues that the Federal Circuit
decision’ this Court relied on in barring the temporary takings

? Plaintiff pursued a temporary taking claim before the Court of
Federal Claims in Case No. 02-1915 C. There, the Court of

9a

claim was not entitled to res judicata effect. According to
Plaintiff, the Federal Circuit’s decision improperly determined
the accrual date for the statute of limitations on his temporary
taking claim. The Court concludes, however, that Plaintiff's
temporary taking claim continues to be barred by res judicata
principles.

Federal Claims held that his claim was barred by res judicata and
the Federal Circuit affirmed. Hornback, 56 Fed. CI. at 363, aff'd,
No. 03-5099 (Fed. Cir. Jan. 13, 2004). The Federal Circuit held:

First, Hornback asserts mat the doctrine of res judicata is
inapplicable because the Court of Federal Claims did not
previously address his temporary takings claim on the
merits. He distinguishes his claim in the present case from
his claim in the earlier Case No. 99-38 C on the basis that
the earlier claim was filed while the secrecy order was in
effect and therefore alleged a permanent taking, whereas
the present claim was filed after the secrecy order was
rescinded and therefore alleged only a temporary taking...

Recently, we affirmed the Court of Federal Claims’
dismissal of another of Hornback’s takings claims on the
ground that Hornback was collaterally estopped from
arguing that his filing was timely. [citations omitted] In that
case, we specifically addressed Hornback’s allegation that
~““for 13 years, [from 1987 when the secrecy order was
imposed until 2000 when the patent issued] Plaintiff was
deprived of all use of his property.” [citations omitted].
Thus, Hornback has previously, raised, and we have
previously considered the same temporary takings theory
that he now asserts in the present case. That claim was
adjudicated on the merits when we held that it was
untimely, based on Hornback’s previous litigation of the
statute-of-limitations issue.

Hornback, No. 03-5099 (Fed. Cir. Jan. 13, 2004).

10a

Res judicata, or claim preclusion, precludes the
relitigation of a claim previously tried and decided. Clarke.
Bear Stearns & Co., 966 F.2d 1318, 1320 (1992). Any basis
or theory of recovery that a litigant could have asserted in the
previous litigation, is barred by res judicata if the prior suit
was between the same parties on the same cause of action. /d;
Owens v. Kaiser Found. Health Plan, Inc., 244 F.3d 708, 713
(9th Cir. 2001). “Res judicata applies when there is: (1) an
identity of claims; (2) a final judgment on the merits; and (3)
identity or privity between the parties.” Stuart v. U.S.
Bancorp, 297 F.3d 953, 956 (9th Cir. 2002). Courts in the
Ninth Circuit look to the following factors to determine if a
cause of action is the same as brought in a previous litigation:
(1) whether rights or interests established in the prior
judgment would be destroyed or impaired by prosecution of
the second action; (2) whether substantially the same evidence
is presented in the two actions; (3) whether the two suits
involve infringement of the same right; and (4) whether the
two suits arise out of the same transactional nucleus of facts.
Clark, 966 F.2d at 1320.

The Court reaffirms it’s conclusion that this case presents
the same causes of action as Plaintiffs previous cases. The
factors supporting that conclusion include: (1) the rights of the
parties established in the prior cases would be substantially
impaired by prosecution of this case, (2) the same evidence is
presented in this action as in Plaintiff's prior suits against
Defendant, (3) the suits involve the infringement of the same
right - the alleged taking, whether permanent or temporary of
Plaintiff's intellectual property rights, and (4) the suits arise
out of the same transactionai nucleus of facts (for instance, the
classification of the patent application). Therefore, the Court
finds that the doctrine of res judicata bars the relitigation of
Plaintiff's takings claim.

lla

Finally, Plaintiff requests reconsideration of this Court’s
order denying his motion for summary judgment. The Court
concludes that Plaintiff fails to state grounds sufficient to
justify reconsideration of that order. Accordingly, the Court
DENIES Plaintiff's motion for reconsideration.

IV. Conclusion

Having reviewed the papers submitted and the relevant
law, IT IS HEREBY ORDERED that Plaintiff's motion for
reconsideration [doc. no. 14] is DENIED.

IT IS SO ORDERED.

/s/ Hon. William QO. Hayes
HON. WILLIAM Q. HAYES

UNITED STATES DISTRICT JUDGE

12a

APPENDIX D

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA

Civil No.04-CV0339-WQH (Wmc)
[Filed August 19, 2005]

ALTON B. HORNBACK,
Plaintiff,

Vv.

UNITED STATES OF
AMERICA

)
)
)
)
)
)
)
Defendants. he )
)

ORDER RE: PLAINTIFF’S MOTION FOR
SUMMARY JUDGMENT AND DEFENDANT’S
MOTION TO DISMISS [Doc. No.’s 4 & 8]

Plaintiff Alton B. Hornback (“Plaintiff” or “Hornback”)
moves this Court for summary judgment. In addition,
Defendant United States of America (“Defendant” or
“Government”) moves to dismiss Plaintiff's complaint. The
Court finds the resolution of both of these motions suitable for
decision on the parties’ papers without oral argument,
pursuant to Local Civil Rule 7.1(d)(1)

13a

I. INTRODUCTION/FACTUAL BACKGROUND!
A. Plaintiff's Complaint

On February 12, 2004, Plaintiff filed a complaint for
damages pursuant to the Federal Tort Claims Act seeking
damages and compensation in the amount of $12,000,000.00.
Plaintiff's complaint alleges that the Defendant improperly
imposed one or more secrecy orders on his patent application
for an invention called a “Real-Time Boresight Error Slope
Sensor.” Plaintiff claims that the secrecy orders effectively
served as a temporary taking of his intellectual property

rights.
According to Plaintiff, his invention is designed to,

(I) to prevent parasitic oscillations in an ABM missile
such as the Advanced Patriot PAC-3), operating in the
altitude/velocity regime encountered in an anti-ballistic
missile intercept; (ii) to permit wide bandwith HARM
__ type seekers to be used against emissions from moving
targets, including stealth aircraft; and (iii) to improve
the cost/effectiveness of missiles which use either a
radar, or an infra-red, terminal homing seeker.

Complaint, p. 2.

Plaintiff alleges that on April 25, 1986, he filed a patent
application with the Patent and Trademark Office (“PTO”) for

' The following factual background is derived from Plaintiff's
complaint and the parties’ respective papers submitted in
connection with Plaintiff's motion for summary judgment and
Defendant’s motion to dismiss.

l4da

his invention. Plaintiff further alleges that on April 16, 1987,
the Air Force classified his invention as Secret, pursuant to
Executive Order 12356. Complaint, p. 2. Plaintiff alleges that
the Government did not have the authority to classify his
patent application as “Secret.” /d. at p. 2. Thereafter, on
August 24, 1987, according to Plaintiff, the PTO imposed a
Secrecy Order on his application. /d. at p. 3. Plaintiff also
alleges that on September 17, 1987, the PTO issued a “notice
of allowability” stating that Plaintiff's patent application was
in condition for allowance but that in view of the secrecy
order the application would be withheld from issue during
such time as the national interest requires. Jd. On April 2 I,
1999, the Secrecy Order was rescinded and on June 27, 2000,
the PTO issued Plaintiff's patent, /d. Plaintiff alleges that the
Government’s actions constitute a tortious taking, fraud,
conspiracy, perjury, and suppression of evidence. /d. pp. 3-4.

Plaintiff alleges that the Government could have realized
a $120 million savings by utilizing his invention and that he
is entitled to $12 million dollars for the temporary taking, /d.
at p. 6. However, Plaintiff's complaint does not allege that
Defendant has actually utilized his invention on it’s ABM
missiles without compensating him.

B. Plaintiff's Previous Litigation History

This case is not the first time Plaintiff has litigated his
claims against the Government. Plaintiff has filed similar
cases in this district and before the Court of Federal Claims
over the last fifteen years.

15a
1. Southern District of California Cases

- a. Hornback vy. United States, Civil Action No. 89-
1914-R(M) (S.D. Cal. Oct. 2, 1992) aff’d, 16
F.3d 422 (Fed. Cir. 1993).”

Plaintiff first brought suit on his claims for damages
resulting from the classification of his patent application and
the imposition of a secrecy order on that application in the
Southern District of California in 1989. Plaintiff brought suit
under 35 U.S.C. § 183 alleging damages caused by the
imposition of the secrecy order and for the “severe and total
damage defined by the eminent domain taking” of [Plaintiffs]
property.” The district court granted summary judgment in
favor of the Government. See October 2, 1992 Order,
attached to Defendant’s Motion to Dismiss. The district court
found that Plaintiff had not alleged any actual damages or
“concrete evidence of damages” as required by Section 183.
In addition, the district court found that Plaintiff could not
state a Fifth Amendment taking claim because Section 183 is
an exclusive remedy for parties in Plaintiff's position, /d. at
5-6. On December 22, 1993, the Federal Circuit affirmed the
district court’s judgment in an unpublished opinion.

b. Hornbaek v. United States, No. 94C V0952-IEG
(S.D. Cal.), aff'd, 91 F.3d 152 (9 Cir. 1996)

(unpublished)’

? The Federal Circuit’s opinion was non-precedential, however,
under Federal Circuit rules a non-precedential opinion may be used
for claim or issue preclusion. Federal Circuit Rule 47.6(b).

> While United States Court of Appeals for the Ninth Circuit
(“Ninth Circuit”) provides that its unpublished opinions are not
binding precedent, they may be used for res judicata or collateral

l6a

In the second case brought by Plaintiff in the Southern
District of California, Plaintiff again alleged that the
Government took his invention by classifying his invention as
secret and placing a secrecy order on his patent application,
requiring compensation under the Fifth Amendment.
Hornback v. United States, 91 F.3d 152 (9th Cir.
1996)(unpublished). The district court dismissed Plaintiff's
complaint for lack of subject matter jurisdiction under 28
U.S.C. '§ 1346(a)(2) because Plaintiff alleged just
compensation greater than $10,000.00. Jd. The district court
also refused to transfer Plaintiffs case to the Court of Federal
Claims because the six-year statute of limitations had run. /d.
The Ninth Circuit affirmed the judgment of the district court
dismissing Plaintiff's complaint. The Ninth Circuit
specifically affirmed the district court’s conclusion that (I)
because Plaintiff sought more than $10,000 in monetary relief
the district court lacked subject matter jurisdiction and (2)
Plaintiff's Fifth Amendment takings claim accrued no later
than April 1987 when the Air Force notified him that his
invention had been classified as secret and the statute of
limitations had therefore run on his claim, /d. .

2. Court of Federal Claims Litigation

Plaintiff has also filed a series of cases in the Court of
Federal Claims: Hornback v. United States, No. 96-121 C;
Hornback v. United States, No. 96-647 C; Hornback v.
United States, No. 98-58 C; Hornback v. United States, No.
99-38 C; Hornback v. United States, No. 99-168 C; Hornback
v. United States, 00-374 C; Hornbaek v. United States, 01-99
C; Hornback v. United States, 01-136 C; Hornback v. United

estoppel purposes. Ninth Circuit Rule 36-3.

17a

States, No. 02-1915 C; Hornback v. United States, No. 03-
2063 C.

In five prior cases, two of which were consolidated in the
Court of Federal Claims, Plaintiff asserted that he was entitled
to compensation for the classification of information in his
patent application and the imposition of a secrecy order on
that application under a variety of theories, including: Fifth
Amendment taking, 35 U.S.C. § 183, and improprieties
related to the classification of his patent application. Hornback
v. United States, No. 99-168 C (consolidated with 00-374 C
(Fed. Cl. May 13, 2003); Hornback v. United States, No. 56
Fed. Cl. 462 (Fed. CI. 2003) (No. 01-99 C); Hornback v.
United States, 56 Fed. C1. 359 (Fed. CI. 2003) (No. 021915
C); Hornback v. United States, 52 Fed. CI. 374 (Fed. Cl.
2002) (No. 99-38 C). These cases all resulted in dismissal of
Plaintiffs claims with prejudice by the Court of Federal
Claims and all of these judgments were affirmed on appeal.

a. Hornback v. United States, 52 Fed. Cl. 374 (Fed.
CL 2002) (No. 99-38 C), aff'd, No. 02-5111,
2002 WL 31796654 (Ted. Cir. Dec 4, 2002)

(non-precedential)

In this case Plaintiff alleged a Fifth Amendment taking of
his property when the Government imposed a security
classification on his patent application, withheld the patent
from issue, willfully took physical possession of that
application and its subject matter, and denied him the fight to
possess a copy of his patent application when his security
clearance was revoked upon retirement. Complaini, Case No.
99-38 C; Hornback, 52 Fed. CI. at 375. The Court of Federal
Claims dismissed Plaintiff's complaint holding that Plaintiff's
taking claim was barred by the six-year statute of limitations,
id. at 383, and was also barred by res judicata in light of the

18a

two previous cases filed by Plaintiff in the Southern District
of California that were litigated to decisions on the merits,/d,
at 386.

The Court of Federal Claims also held that Plaintiff was
barred from relitigating the issue of whether his takings claim
was barred by the statute of limitations. Jd. at 387. Further,
the court held that Plaintiff was barred from relitigating the
issue of whether 35 U.S.C. § 183 provides the exclusive
remedy for damage sustained by the imposition of a secrecy
order on a patent application. /d. at 389. The Court of Federal
Claims decision was affirmed by the Federal Circuit on
appeal. Hornback, 2002 WL 31796654.

b. Hornback vy. United States, No. 99-168 C
consolidated with 00-274 C (Fed. Cl. May 13,
2004) rr

Plaintiff brought these two cases under theories of
recovery under 35 U.S.C. § 183 for damage caused by the
imposition of the secrecy order and for the alleged
unauthorized use by the Government of Plaintiff's invention.
Hornback, No. 99-168 C c/w 00-374, slip op. at 2. The Court
of Federal Claims held that Plaintiff's claim was barred by res
judicata or claim preclusion because Plaintiff could have
raised those theories of recovery in previous cases before the
Court of Federal Claims. /d. at 4. The Court of Federal
Claims judgment was affirmed on appeal by the Federal
Circuit. Hornback v. United States, Nos. 03-5108, -5111
(Fed. Cir. January 13, 2004) (non-precedential).

19a

c. Hornback v. United States, 56 Fed. CL 462 (Fed.
CI. 2003) (No. 01-99 C)

In this case, Plaintiff sought damages for “the propriety
interest in his intellectual property acquired by the U.S.
Government which was mandated by 32 C.F.R. §
159a.15(eX3) as a prerequisite for its classification at the level
of SECRET pursuant to Executive Order 12356.” Complaint,
Case No. 01-99 C. After issuing a show cause order why the
complaint should not be dismissed, the Court of Federal
Claims held that Plaintiff’s claim was barred by res judicata
again because Plaintiff could have raised this theory of
recovery in a previous suit or, in the alternative, Plaintiff had
not stated a claim because the regulatory authority under
which he premised his claim did not exist at the time his
action accrued. Hornback, 56 Fed. Cl. at 465 and 464 n. 3.
This judgment was recently affirmed on appeal. Hornback v.
United States, Nos. 035108, -5111 (Fed. Cir. January 13,
2004) (non-precedential).

d. Hornback v. United States, 56 Fed. Cl. 359
(Fed. Cl. 2003) (No. 02-1915 C)

In this case, Plaintiff raised a temporary takings theory of
recovery for the Government’s imposition of a secrecy order
on his patent application, as well as damages for alleged
improprieties committed during the taking. The Court of
Federal Claims found Plaintiff's claim barred by res judicata.
Hornback, 56 Fed. Cl. at 363. The Court of Federal Claims
also held that Plaintiff's claim was barred by the statute of
limitations and that 35 U.S.C. § 183 provided that the
exclusive remedy for harm imposed by the secrecy order, Id.
at 364. Further, the court held that it lacked subject matter
jurisdiction to hear Plaintiff's claim for the alleged
improprieties committed during the taking. Jd. at 365. The

20a

Federal Circuit affirmed. Hornback v. United States, No. 03-
5099 (Fed. Cir. January 13, 2004) (non-precedential).

Recently the Federal Circuit warned Plaintiff that
continued filing of claims is frivolous. In a per curiam order
the Federal Circuit stated,

. Hornback has now had substantial opportunities to
challenge the PTO’s secrecy order and to raise various
theories concerning recovery of damages against the
United States government. While the courts of the
United States are open for individuals to make claims
against their government, continued challenges
concerning the same set of underlying facts eventually
constitute an abuse of the judicial system. Such a point
has now been reached. Hornback is therefore warned
that further appeals involving claims based on the
same set of facts, whether raising the same or new
theories, may be held to be frivolous and subject to
sanctions, see Fed. R. App. P. 38.

Hornback v. United States, Nos. 03-5108, -5111, slip op. at
8-9 (Fed. Cir. Jan. 13, 2004).

Ill. Discussion

A. Defendant’s Motion to Dismiss

Defendant moves to dismiss Plaintiff's complaint on
grounds that (1) Plaintiff's complaint is barred by res judicata
and collateral estoppel; (2) Plaintiff's complaint is barred by
the statute of limitations; (3) the Court lacks subject matter
jurisdiction over the complaint; and (4) Plaintiff failed to
exhaust his administrative remedies.

21a
1. Legal Standards
a. Failure to State A Claim

A Rule 12(6)(6) motion tests the sufficiency of the
complaint. Navarro v. Block, 250 F.3d 729, 732 (9th Cir.
2001). Dismissal of a claim under Rule 12(b)(6) is appropriate
only where “it appears beyond doubt that the plaintiff can
prove no set of facts in support of his claim which would
entitle him to relief.” Conley v. Gibson, 355 U.S. 41, 45-46
(1957); Navarro, 250 F.3d at 732. Dismissal is warranted
under Rule 12(b)(6) where the complaint lacks a cognizable
legal theory. Robertson v. Dean Witter Reynolds, Inc., 749
F.2d 530, 534 (9th Cir. 1984); see Neitzke v. Williams, 490
U.S. 319, 326 (1989) (“Rule 12(b)(6) authorizes a court to
dismiss a claim on the basis of a dispositive issue of law.”).
Alternatively, a complaint may be dismissed where it presents
a cognizable legal theory yet fails to plead essential facts
under that theory. Robertson, 749 F.2d at 534.

In reviewing a motion to dismiss under Rule 12(b)(6), the
court must assume the truth of all factual allegations and must
construe them in the light most favorable to the nonmoving
party. Thompson v. Davis, 295 F.3d 890, 895 (9th Cir.
2002), cert denied, b U.S. __, 123 S.Ct. 1570 (2003); Cahill
v. Liberty Mut. Ins. Co., 80 F.3d 336, 337-38 (9th Cir.
1996). However, legal conclusions need not be taken as true
merely because they are cast in the form of factual allegations.
Robertson v. Corrothers, 812 F.2d 1173, ! ! 77 (9th Cir.
1987); Western Mining Council v. Watt, 643 F.2d 618, 624
(9th Cir. 1981). “Nor is the court required to accept as true
allegations that are merely conclusory, unwarranted
deductions of fact, or unreasonable inferences.” Sprewell v.
Golden State Warriors, 266 F.3d 979, 988 (9th Cir. 2001),
amended by 275 F.3d 1187 (9th Cir. 2001). When ruling on

22a

a motion to dismiss, the court may consider the facts alleged
in the complaint, documents attached to the complaint,
documents relied upon but not attached to the complaint when
authenticity is not contested, and matters of which the Court
takes judicial notice. Parrino v. FLIP, Inc., 146 F.3d 699,
705-06 (9th Cir. 1998); Branch v. Tunnell, 14 F.3d 449, 453-
54 (9th Cir. 1994); MGIC Indem. Co. v. Weisman, 803 F.2d
500, 504 (9th Cir. 1986).

b. Subject Matter Jurisdiction

Federal courts are courts of limited jurisdiction. Kokkonen
v. Guardian Life Ins. Co. of America, 511 U.S. 375, 377
(1994). Federal courts are presumptively without jurisdiction
over civil actions and the burden of establishing the contrary
rests upon the party asserting jurisdiction, /d. Federal judicial
power extends only to cases and controversies over which a
court has subject matter jurisdiction. Fed. R. C iv. P.
12(b)(1); Barker-Hatch v. Viejas Group Baron Long Capitan
Grande Band of Diqueno Mission Indians of Viejas Group
Reservation, 83 F. Supp.2d 1155, 1156 (S.D. Cal. 2000). A
federal court must consider its own subject matter jurisdiction
prior to ruling on any other motion. Ninigret Development
Corp. v. Narragansett Indian Wetuomuck Housing Authority,
207 F.3d 21, 28 (1st Cir. 2000).

2. Analysis

In this case Plaintiff brings two distinct claims against the
Defendant: (1) a “temporary” taking claim based on the
Defendant's alleged taking of Plaintiff's intellectual property
over a twelve year period; and (2) a Federal Tort Claims Act
for the “tortious acts committed during the course of that
taking, which include fraud, conspiracy to defraud, perjury,

23a

and the suppression of evidence of those acts.” Complaint, p.
\. Defendant maintains that both claims are barred.

a. The Effect of Prior Lawsuits On Plaintiff's
Temporary Taking Claim

Plaintiff's first claim is for the temporary taking of his
intellectual property fights. Defendant argues that (1)
Plaintiff's taking claim is not cognizable under the Federal
Tort Claims Act, (2) is barred by the doctrines of res judicata
and collateral estoppel, (3) is barred by the six year statute of
limitations, and (4) that 35 U.S.C. § 183 provides the
exclusive remedy. The Court first addresses Defendant’s res
judicata argument.

Res judicata, or claim preclusion, precludes the
relitigation of a claim previously tried and decided. Clark v.
Bear Stearns & Co., 966 F.2d 1318, 1320 (1992). Any basis
or theory of recovery that a litigant could have asserted in the
previous litigation, is barred by res judicata if the prior suit
was between the same parties on the same cause of action. Id;
Owens v. Kaiser Found Health Plan, Inc., 244 F.3d 708, 713
(9th Cir. 2001). “Res judicata applies when there is: (1) an
identity of claims; (2) a final judgment on the merits; and (3)
identity or privity between the parties.” Stuart v. U.S.
8ancorp, 297 F.3d 953, 956 (9th Cir. 2002). Courts in the
Ninth Circuit look to the following factors to determine if a
cause of action is the same as brought in a previous litigation:
(1) whether rights or interests established in the prior
judgment would be destroyed or impaired by prosecution of
the second action; (2) whether substantially the same evidence
is presented in the two actions; (3) whether the two suits
involve infringement of the same fight; and (4) whether the
two suits arise out of the same transactional nucleus of facts.
Clark, 966 F.2d at 1320.

24a

The. Court finds that_all_of the factors for res iudicata are
met in this case. Plaintiff has previously brought lawsuits
alleging the same theory of recovery he asserts in his first
cause of action - a taking of his intellectual property rights by
the identical defendant, the United States of America. In
addition, the earlier cases litigating Plaintiff's taking claim
reached final judgment on the merits.

In 1989, Plaintiff brought a suit against the same
Defendant on claims for damages resulting from the alleged
taking by classification of his patent and the imposition of a
secrecy order on that application. Hornback v. United States,
Civil No. 89-1914-R(M) (S.D. Cal. Oct. 2, 1992), aff'd, 16
F.3d 422 (Fed. Cir. 1993). The district court granted
summary judgment in favor of the Defendant concluding that
35 U.S.C. § 183 provided the exclusive remedy for Plaintiff's
asserted injury and that Plaintiff's asserted damages were
entirely speculative.‘

In 1994, Plaintiff again sued Defendant, alleging a taking
stemming from the classification of his invention as secret.
Hornback v. United States, Civil No. 94-0952-IEG (S.D.
Cal.), aff'd, 91 F.3d 152 (9th Cir. 1996). The district court
dismissed the complaint for lack of subject matter jurisdiction
and refused to transfer the case because the statute of
limitations had expired. /d. Plaintiff also pursued five prior
cases (two of which were consolidated) in the Court of
Federal Claims claiming that Defendant's classification of his

* Summary judgment is a judgment on the merits. Colello v. United
States Sea & Exech. Comm ‘n, 908 F. Supp. 738, 747 (C.D. Cal.
1995). Accordingly, such a judgment is entitled to res judicata
effect in subsequent litigation. Schwarzer, Tashima, and Wagstaffe,
California Practice Guide: Federal Civil Procedure Before Trial,
§ 14:28 (2004).

“a 25a

paler application and the wnaposition of a secrecy order on
that application constituted a taking under the Fifth
Amendment.

Plaintiff attempts to distinguish the instant case from his
previous suits by arguing that he is now pursuing a
“temporary” takings claim. The Fifth Amendment's
prohibition on the taking of private property for public use
without just compensation applies to both “temporary” and
“permanent” takings. See Tahoe-Sierra Preservation
Council, Inc. v. Tahoe Regional Planning Agency, 535 U.S.
302, 347-48 (2002). Plaintiff pursued a temporary taking
claim before the Court of Federal Claims in Case No. 02-
1915 C. There, the Court of Federal Claims held that his
claim was barred by res judicata and the Federal Circuit
affirmed. Hornback, 56 Fed. C1. at 363, arid, No. 03-5099
(Fed. Cir. Jan. 13, 2004). The Federal Circuit held:

First, Hornback asserts that the doctrine of res
judicata is inapplicable because the Court of Federal
Claims did not previously address his temporary
takings claim on the merits. He distinguishes his
claim in the present case from his claim in the earlier
Case No. 99-38 C on the Basis that the earlier claim
was filed while the secrecy order was in effect and
therefore alleged a permanent taking, whereas the
present claim was filed after the secrecy order was
rescinded and therefore alleged only a temporary

Recently, we affirmed the Court of Federal Claims’
dismissal of another of Hornback’s takings claims on
the ground that Hornback was collaterally estopped
from arguing that his firing was timely. [citations
omitted] In that case, we specifically addressed

26a

Hornback’s allegation that “for 13 years, (from 1987
when the secrecy order was imposed until 2000 when
the patent issuedj Plaintiff was deprived of all use of
his property .” [citations omitted]. Thus, Hornback has
previously raised, and we have previously considered
the same temporary takings theory that he now asserts
in the present case. That claim was adjudicated on the
merits when we held that it was untimely, based on
Hornback’s pervious litigation of the statute-of-
limitations issue.

Hornback, No. 035099 (Fed. Cir. Jan. 13, 2004). The Court
agrees with the Federal Circuit that the “temporary” takings
claim now asserted has been in previously adjudicated in
Plaintiff's earlier lawsuits alleging a permanent taking. All
the facts giving rise to Plaintiff's cause of action for a
temporary taking are the same as those supporting his
permanent taking claim. Namely, Plaintiff alleges that the
secrecy order placed on his patent application and_ the
classification of his patent application effected a Fifth
Amendment taking. Plaintiff has previously litigated those
claims. The Court finds that (1) substantially the same
evidence is presented in this action and Plaintiff's prior suits
against Defendant, (2) the suits involve the infringement of
the same right - the alleged taking, whether permanent or
temporary of Plaintiff's intellectual property rights, and (3)
the suits arise out of the same transactional nucleus of facts.
Therefore, the Court finds that the doctrine of res judicata
bars the relitigation of Plaintiff's takings claun.

As the Court finds that Plaintiff's first claim for a Fifth
Amendment taking of his intellectual property is barred by the
doctrine of res judicata, the Court need not discuss
Defendant’s arguments that Plaintiff's claim is not cognizable
under the FTCA, that the claim is barred by collateral

27a

estoppel, the statute of limitations bars the claim or that 35
U.S.C. § 183 provides the exclusive remedy.

b. Plaintiff's Claim for Compensation for
Fraudulent Acts Committed During the Alleged
Taking

Plaintiff's second claim alleges that the PTO, Department
of Defense, or those working on their behalf, committed fraud
in the course of committing the alleged taking of Plaintiff's
intellectual property (the “improprieties claim”). For instance,
Plaintiff alleges that “non-trivial errors” were inserted in his
issued patent “for counter-intelligence purposes” which
evidences fraud and conspiracy “between the PTO and
DOD.” Complaint, p. 4. Further, Plaintiff alleges that an Air
Force attorney perjured himself by stating that the Air Force
was instrumental in reducing the classification of Plaintiff's
patent application from secret to “classifiable” when
according to Plaintiff” classifiable is not a proper classification
level.” /d. Plaintiff also alleges that Defendant suppressed
evidence, /d. Defendant argues that this Court lacks
jurisdiction to entertain Plaintiff's improprieties claim and
therefore that claim should be dismissed.

With respect to suits against the United States
Government, it is clear that the United States, as a sovereign,
is immune from suit unless it consents to be sued. United
States v. Mitchell, 445 U.S. 535, 538 (1980). Any waiver of
that immunity must be unequivocally expressed. /d. The
FTCA is an express waiver of sovereign immunity under
which the United States is subject to suit in actions sounding
in tort. See 28 U.S.C. § 1346(b). The scope of the federal
government’s consent to be sued in tort is limited by the
exceptions set forth in 28 U.S.C. § 2680. If a case falls within
any exception to the waiver, the court lacks subject matter and

28a

the case must be dismissed. See United States v. Gaubert, 499
U.S. 315, 323 (1991); Monaco v. United States, 661 F.2d

129, 131 (9th Cir. 1981).

28 U.S.C. § 2680(h) specifies that the FTCA’s waiver of
sovereign immunity does not apply to “[a)ny claim arising out
of assault, battery, false imprisonment, false arrest, malicious
prosecution, abuse of process, libel, slander,
misrepresentation, deceit, or interference with contract
rights.” 28 U.S.C. § 2680(h); see Wilson v. Drake, 87 F.3d
1073, 1076 (9th Cir. 1996). Plaintiff's impropriety claim
alleges that the Defendant committed several acts constituting
fraud against him during the pendency of the secrecy order on
above. Misrepresentation and deceit are torts that are
specifically excluded from the waiver of sovereign immunity
under the FTCA. 28 U.S.C. § 2680(h). Allegations of fraud
are akin to allegations of misrepresentation and deceit. See
Safeway Portland Employees” Fed. Credit Union v. Fed.
Deposit Ins. Corp., 506 F.2d 1213 (9th Cir. 1974) (scheme to
defraud the public is within the misrepresentation and deceit
exception under 28 U.S.C. § 2680(h)); see W. PAGE
KEETON ET AL., PROSSER & KEETON ON TORTS §
105 (Sth ed. 1984). Accordingly, Plaintiff's improprieties
claim is excluded under the waiver of sovereign immunity
under the FTCA and therefore this Court lacks subject matter
jurisdiction to adjudicate that claim.

B. Plaintiff's Motion for Summary Judgment

Plaintiff moves for summary judgment on grounds that
there are no genuine issues as to any material facts and he is
entitled to judgment as a matter of law. Defendant opposes
Plaintiffs motion.

29a
1. Legal Standard

Summary judgment is appropriate under Rule 56 of the
Federal Rules of Civil Procedure where the moving party

demonstrates the absence of a genuine issue of material fact
and entitlement to judgment as a matter of law. Fed. R. Cir.
P. 56(c); see also Celotex Corp. v. Cairett, 477 U.S. 317,
322 (1986). A fact is material when, under the governing
substantive law, it could affect the outcome of the case.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
A dispute over a material fact is genuine if” the evidence is
such that a reasonable jury couid return a verdict for the
nonmoving party.” /d.

A party seeking summary judgment always bears the
initial burden of establishing the absence of a genuine issue of
material fact. Celotex, 477 U.S. at 323. The moving party
may meet this burden in twe ways: (1) by presenting evidence
that negates an essential element of the nonmoving party’s
case or (2) by demonstrating that the nonmoving party failed
to make a showing sufficient to establish an elemer* essential
to that party’s case on which that party will bear the burden
of proof at trial. /d. at 322-23. If the moving party fails to
discharge this initial burden, summary judgment must be
denied and the court need not consider the nonmoving party’s
evidence. Adickes v. S.H. Kress & Co., 398 U.S. 144, 159-60
(1970).

If the moving party satisfies its initial burden, the
nonmoving party cannot defeat summary judgment merely by
demonstrating “that there is some metaphysical doubt as to the
material facts.” Matsushita Elec. Indus. Co., Lid. v. Zenith
Radio Corp., 475 U.S. 574, 586 (1986); see also Anderson,
477 U.S. at 252 (“The mere existence of a scintilla of
evidence in support of the nonmoving party’s position is not

30a

sufficient.”). Rather, the nonmoving party must “go beyond
the pleadings and by her own affidavits, or by the depositions,
answers to interrogatories, and admissions on file, designate
specific facts showing that there is a genuine issue for trial.”
Celotex, 477 U.S. at 324 (quoting Fed. R. Civ. P. 56(e))
(iaternal quotations omitted).

In ruling on a motion for summary judgment, “[t}he
district court may limit its review to the documents submitted
for purposes of summary judgment and those parts of the
record specifically referenced therein.” Carmen v. San
Francisco Unified Sch. D/st., 237 F.3d 1026, 1030 (9th Cir.
200 I). Therefore, the court is not obligated to “scour the
record in search of a genuine issue of triable fact.” Keenan v.
Allen, 91 F.3d 1275, 1279 (9th Cir. 1996) (citing Richards v.
Combined Ins. Co., 55 F.3d 247, 251 (7th Cir. 1995)). The
court must view all inferences drawn from the underlying
facts in the light most favorable to the nonmoving party.
Matsushita, 475 U.S. at 587. “Credibility determinations
[and] the weighing of evidence ... are jury functions, not
those of a judge, [when] he [or she] is ruling on a motion for
summary judgment.” Anderson, 477 U.S. at 255.

2. Analysis

Plaintiff's motion for summary judgment fails because he
cannot demonstrate that there are no factual disputes and that
he is entitled to judgment as a matter of law. As discussed
above, Plaintiff's claim for Fifth Amendment taking is barred
by the doctrine of res judicata. In addition, this Court lacks
subject matter jurisdiction to entertain Plaintiff's improprieties
claim.

As such the Court DENIES Plaintiff's motion for
summary judgment.

3la
IV. CONCLUSION

Having reviewed the papers submitted and the relevant
law, IT IS HEREBY ORDERED that Plaintiff's motion for
summary judgment is DENIED. IT IS FURTHER
ORDERED that Defendant’s motion to dismiss Plaintiff's
complaint is GRANTED. The Court DISMISSES Plaintiff's

Complaint with prejudice.
IT IS SO ORDERED.

|
|
|

32a

APPENDIX E

INDUSTRIAL SECURITY MANUAL FCR
SAFEGUARDING CLASSIFIED INFORMATION

Department of Defense
January 1991

DEFENSE INVESTIGATIVE SERVICE
1900 Half St., S.W.
Washington, D.C. 20324-1700

January 3, 1991
FOREWORD

This Manual is issued under the authority of DoD
Directive 5220.22, “DoD Industrial Security Program,”
December 8, 1980. Its purpose is to provide uniform security
requirements for safeguarding information of the Department
of Defense, certain other federal agencies, and Certain foreign
governments, that is released or disclosed to Industry in
connection with classified contracts under the Defense

Industrial Security Program.

The provisions of this Manual apply to all industrial,
educational, commercial and other organizations and entities
that have executed a DoD Security Agreement (DD Form
441) or a DoD Transportation Security Agreement (DIS Form
1149) with the Department of Defense.

33a

This Manual supersedes DoD 5220.22-M, March 1989.
The revisions of this Manual are required by the demands of
national security as determined by the Government, notice of
which is hereby furnished pursuant to section 1 A(1) of the DD
Form 441 and section 1A of the DIS Form 1149.

Users of this publication are encouraged to submit
recommended changes and comments to their cognizant
security office, Defense Investigative Service.

This Manual is effective immediately, and is mandatory
for use by all industrial firms cleared under the Defense
Industrial Security Program.

An initial distribution of this Manual will be made to
current participants in the Defense Industrial Security
Program. Additional copies may be obtained from the
Superintendent of Documents, U.S. Government Printing
Office, Washington, D.C. 20402.

/s/ John F. Donnelly

Director

34a
SECTION 3. STORAGE AND STORAGE EQUIPMENT

5-300. General. Classified information shall be stored under
conditions adequate to prevent unauthorized persons from
gaining access. Contractors shall not be eligible to receive,
nor have possession of, classified material at their cleared
facilities until they have adequate storage capability approved
by the CSO. Classified material, when not in actual use and
under the control of an appropriately cleared person, shall be
stored and protected in accordance with this Section.

5-301. Standards for Storage Equipment. The General
Services Administration (GSA) establishes and publishes
uniform standards, specifications, and supply schedules for
containers, vaults, and associated security devices and
equipments suitable for the storage and protection of classified
information. Cabinets, manufacturers, and prices of storage
equipment approved by the GSA are listed in the Federal
Supply Schedule (FSS) catalog (FSC GROUP 71-Part Il).
Copies of specifications and schedules may be obtained from
any regional office of the GSA.

5-302. TOP SECRET STORAGE. TOP SECRET material
shall be stored in an approved security container or in an
approved Class A, B, or C vault, with supplemental controls.

5-303. TOP SECREI Supplemental Controls. During
nonworking hours, the following area (room, building or
structure) controls are required for TOP SECRET material.

a. Entry to the area in which the container is located shall
be controlled by a SECRET cleared, authorized employee or
guard stationed to control access to the area, or by a lock
which provides reasonable protection against surreptitious
entry; and

35a

b. The interior of the area (whichever is controlled in
accordance with paragraph a. above) shall be patrolled and
each container inspected at least once every two (2) hours by
a SECRET cleared guard who is supervised by a system that
provides a record of the coverage of key points within the
area; or

c. The area in which the container is located, or the
container itself, shall be equipped with an approved alarm
system.

5-304. SECRET Storage. SECRET material shall be stored
in an approved security container or vault auth«ized for the
storage of TOP SECRET without supplemental controls,

or in a security cabinet or strongroom as follows:

a. A safe, steel file cabinet, or safe-type steel file
container which has an automatic unit locking mechanism and
an built-in combination lock, with supplemental
controls."

b. Any steel file cabinet which has five sides enclosing the
drawers (including a bottom that is permanently attached by
welding, rivets or peened bolts so it may not be removed
without leaving visible evidence of entry) and is secured by a

These cabinets will not be authorized for storage of SECRET
information effective July 1, 1998 unless the cabinets themselves
are alarmed, or they are located in an alarmed area, closed area, or
strongroom during non-working hours. (Case by case exceptions
may be granted by the CSO.) All facilities cleared after June 20,
1988 must conform to these standards prior to receiving approval
to safeguard SECRET material.

36a

rigid metal lock bar and an approved combination padlock,
with supplemental controls.* See NOTE.

5-513. Disclosure During Visits. 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.

a. Contract Related Visits. When there is a classified
classified information may be disclosed without a need-to-
know certification from the User Agency that has jurisdiction
over the information. Such visits are Category | visits.

b. Non-contract Related Visits. When there is no classified
contractual relationship between the parties involved,
classified information may not be disclosed without a need-to-
know certification from the User Agency that has jurisdiction
over the information. Such visits are Category 2 visits.

c. Visit Procedures. See Chapter 6.

5-514. Disclosure at Contract Related Meetings.
Contractors may disclose ciassified information at a meeting

? The keepers of the rigid metal lock bar shall be secured to the
cabinet by welding, rivets, or bolts, so they cannot be removed and
replaced without leaving evidence of the entry. The drawers of the
container shall be held securely, so their contents cannot be
removed without forcing open the drawer.

37a

conducted pursuant to a classified contract without specific
authorization of the User Agency, provided:

a. The meeting is held only in the contractor's or
subcontractor’s cleared facility and the meeting site is
physically secure.

b. Attendance at the meeting is limited to cleared persons
who have a need-to-know in connection with the contract,
including employees of the contractor or subcontractor,
consultants, and User Agency representatives.

c. Security controls are established to ensure proper
safeguarding of the classified information involved.

d. The contractor conducting the meeting shall ensure that
classified documents, notes, minutes, recordings, or
summaries resulting from the meeting are properly classified
and safeguarded, and that attendees are given sufficient
classification guidance during oral presentations. Classified
material removed from the meeting site shall be transmitted as
required by this Manual for the level of classified information
involved.

5-515. Disclosure at Non-contract Related Meetings.
Contractors may disclose classified information at non-
contract related meetings provided written approval for
disclosure of the classified information at the meeting is
obtained from the User Agency that has jurisdiction over the
information and the meeting is sponsored for security
purposes by a User Agency.

5-516. User Agency Sponsorship of Meetings. Disclosure of
classified information to large audiences increases security

risks and may involve substantial costs to provide adequate

38a

security and must be limited to the minimum necessary.
However, classified meetings which serve a government
purpose and at which adequate security measures have been
provided in advance, may be conducted by a cleared
contractor provided the meeting is sponsored by a User
Agency. User Agency sponsorship means that a User Agency
that has principal interest in the classified subject matter of the
meeting must approve the meeting’s security arrangements,
announcements, attendees, and the location of the meeting.
The User Agency may delegate certain responsibilities to a
cleared contractor, under the general supervision of the User
Agency, for the security arrangements and other actions
necessary for the meeting.

a. Requests for Sponsorship. Contractors desiring to
requests to the User Agency having principal interest in the
subject matter of each meeting. Only one User Agency may
sponsor a meeting. Therefore, a request shall be sent to only
one User Agency at a time. If that agency declines to accept
sponsorship, or if it is appropriate to change the sponsoring
agency, the request may be sent to another User Agency
having a principal interest in the subject matter of the
meeting. Such requests shall include the details concerning all
prior requests. A request classification or upgrading to a
higher classification, or believe that the security classification
guidance provided is improper or inadequate, are required to
discuss such issues with the pertinent User Agency for
remedy. If a solution is not forthcoming, and the contractor
believes that corrective action is still required, a formal
challenge shall be made to the User Agency that originally
classified the information. Such challenges shall include a
description sufficient to identify the issue, the reasons why the
contractor believes that corrective action is required, and any
recommendations for appropriate corrective action. In any

39a

case, the information in question shall be safeguarded as
required by this Manua! for its assigned or proposed level of
classification, whichever is higher, until action is completed.
If no answer is received within 45 days, the CSO may be
requested to provide assistance in obtaining a response. The
fact that a contractor has initiated such a challenge will not,
in any way, serve as a basis for adverse action by the User
Agency involved. If a contractor believes that adverse action
did result from a classification challenge, full details should
be furnished promptly to the CSO for resolution.

4-105. Contractor Developed Information. Whenever a
contractor develops an unsolicited proposal or originates
information not in the performance of a classified contract,
the following rules shall apply:

a. If the information contained in the proposal or other
material, was previously identified by a User Agency as
Classified, the proposal or other material shall be classified in
accordance with an appropriate DD Form 254, classification
guide, or source document and marked as required by this

Chapter.

b. If the information does not fall within a. above, and the
contractor believes the proposal or other material contains
information which may, or should, be classified, the
contractor is requested to protect the information as though
classified at the appropriate level and submit it to a User
Agency that has an interest in the subject matter for a
classification determination. In such a case, the following
protective marking, or a similar marking that clearly conveys
the same meaning, shall be used:

40a

CLASSIFICATION DETERMINATION : PENDING-
Protect as though classified (TOP SECRET, SECRET, or
CONFIDENTIAL).

This marking shall appear conspicuously at least once on
the material but it is not necessary to further mark it until a
classification determination is received. In addition,
contractors are not precluded from marking such material as
company-private or proprietary information. Pending a
determination by a User Agency, the contractor is requested
to handle and protect the information as prescribed by this
Manual for the classification level recommended. It should be
noted, however, that E.O. 12:356 prohibits a User Agency
from classifying information over which the Government has
no jurisdiction. The proposal or other material submitted may
not be classified by a User Agency unless: (I) it incorporates
classified information to which the contractor_was given prior
access, or (ii) the Government first acquires a proprietary
interest in the information.

4-106. Classified Information Appearing in Public Media.
The fact that information currently classified by a UA has
appeared in a public medium does not mean that it is
automatically declassified. Contractors shall continue the
classification until formally advised to the contrary by the
User Agency. Questions as to the propriety of continued
classification in these cases should be brought to the
immediate attention of the UA.

4-107. Downgrading or Declassifying Classified
Information. Information is downgraded or declassified
based on the loss of sensitivity of the information due to the
passage of time or on occurrence of a specific event,
information that continues to meet the classification criteria,
despite the passage of time, shall remain classified and

4la

continue to be protected. Contractors downgrade or declassify
information based on the guidance provided in a DD Form
254, upon formal notification, or as shown on the tnaterial.
These actions constitute implementation of a directed action
rather than an exercise of the authority for deciding the
change or cancellation of the classification. At the time the
material is actually downgraded or

42a

APPENDIX F

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA

Civil No.04-CV0339-WQH (Wimc)
{Filed February 19, 2004]

ALTON B. HORNBACK,
Plaintiff,

Vv.

UNITED STATES OF
AMERICA

)
)
)
)
)
)
)
Defendants. )
)

COMPLAINT FOR DAMAGES PURSUANT
TO THE FEDERAL TORT CLAIMS ACT
(28 U.S.C.A 1346(b), 2674)

I. CAUSE OF ACTION

Plaintiff Alton B. Hornback, brings this suit for just 18
compensation and damages, in the amount of $12 million, for:

(1) the theft, or tortious “temporary” taking, of all use by
Plaintiff, of his intellectual property over a 12-year period;
and

43a

(2) for other tortious acts committed during the course of
that taking, which include fraud, conspiracy to defraud,
perjury, and the suppression of evidence of those acts.

Those acts stem from the specifications in the Secrecy
Orders 25 imposed on Plaintiff's patent application allegedly
pursuant to Section 181 of the Invention Secrecy Act of 1952
(35 U.S.C. 181-188), which mandate compliance with
Executive Order 12356 of 1982.

APPENDIX G

UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office

(Filed, 4/25/86]

Pat. & T.M. Office Mailed Aug 24, 1987
Licensing and Review

Serial No.: 859,033
Applicant: Alton B. Hornback
Title: Real Time Boresight Error Slope Sensor

To be protected at Classification Level of:

Top Secret,
XXX _ Secret
Confidential
Special Instructions:

Sponsoring Agency & Address:

U.S. AF/JACP

Chief, Patent Div.
1900 Half. St. S.W.
Washington, DC 20324

SECRECY ORDER AND PERMIT FOR DISCLOSING
CLASSIFIED INFORMATION

(Title 35, United States Code, sections 181-188 (1952))

45a

NOTICE: To the applicant(s) above named; his, her, or their
heirs; and any and all of the assignees, licensees, attorneys
and agents, hereinafter designated principals:

You are hereby notified that the above-identified patent
application has been found to contain subject matter which
discloses classifiable information. The unauthorized disclosure
of such subject mafter would be detrimental to the national
security, and you are ordered to keep the subject matter secret
(as required by 35 U.S.C. 181) and you are further ordered
NOT TO PUBLISH OR DISCLOSE the subject matter to any
person except as specifically authorized herein.

Any other patent application already filed or hereafter filed in
the U.S. or any foreign country which contains any significant
part of the subject matter of the above-identified patent
application falls within the scope of this Order. If such other
patent application is not under a Secrecy Order imposed by
the U.S. Patent and Trademark Office, it and the common
subject matter need to be brought to the attention of the
Director, Group 220, Attn: Licensing and Review, U.S.
Patent and Trademark Office, Washington, D.C. 20231 as
soon as possible.

Publication or disclosure of the subject matter of the above-
identified patent application, except as authorized herein or
subsequently by the Commissioner of Patents and
Trademarks, may subject the 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. 10865, entitled
“Safeguarding of Classified Information Within Industry” or
E.O. 12356, entitled “National Security Information” and

46a

thus is subject to the “Industrial Security Manual for
Safeguarding Classified Information.”

The principals shall protect the subject matter as required by
the Industrial Security Manual for Safeguarding Classified
Information and may disclose the subject matter of the above-
identified application to other persons having the requisite
clearance on a “need-to-known basis” provided the person to
whom the subject matter is disclosed is furnished with a copy
of this Secrecy Order and is informed that this Secrecy Order
is applicable to the subject matter disclosed. The
declassification, in whole or in part, of the subject matter of
the above-identified application does not modify this Secrecy
Order. The requirements of this Secrecy Order remain in
effect until the Secrecy Order is rescinded or modified by the
Commissioner of Patents and Trademarks. The fact that the
subject matter as a whole is declassified should be brought to
the attention of the sponsoring agency

This permission to disclose does not authorize the disclosure
of the subject matter of the above-identified application
through (1) the filing of any foreign application without
specific permission of the Patent and Trademark Office, or (2)
the export of any item or data without any export license
which may be required.

This order should not be construed in any way to mean that
the Government has adopted or contemplates adoption of the
invention disclosed in this application and it is not any
indication of the value of such invention.

/s/ Kenneth L. Cage
Director, Special Laws Administration

47a

APPENDIX H

U.S DEPARTMENT OF COMMERCE
Patent and Trademark Office

Serial No. 06/859,033
Filing Date: 4/25/86

First Named Applicant: Hornback
Date Mailed: 9/17/87

Alton B. Horback
5650 Bloch Street
San Diego, CA 92122

NOTICE OF ALLOWABILITY (FORM D-10)

This application is now in condition for allowance, and the
prosecution is closed. However, 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.

The allowable clams are: 3-6

/s/ Charles Jordan

Examiner

i
f
|
'

48a

APPENDIX I

U.S DEPARTMENT OF COMMERCE
Patent and Trademark Office

Serial No. 06/859 ,033
Filing Date: 4/25/86
First Named Inventor: Hornback
Date Mailed: 4/21/99

RESCINDING ORDER

The Secrecy Order dated 8-24-87 prohibiting disclosure or
publication of the subject matter of the above entitled
application under the provision of Title 35 United States Code
(1952) 181-188 is hereby rescinded. Normal prosecution is

~ continued and any suspension thereof because of the secrecy
order should now the removed. This rescinding order does
not affect the provisions of any classified government contract
or existing laws relating to espionage and national security.

/s/

Director
Special Laws Administration Group

49a

APPENDIX J

UNITED STATES PATENT

HORNBACK
Patent Number: 6,079,666
Date of Patent: Jun. 27, 2000
REAL TIME BORESIGHT ERROR SLOPE SENSOR
Inventor: Alton B. Hornback

5650 Bloch St.

San Diego, Calif. 92122

Appl. No.: 06/859,033

Filed: Apr. 25, 1986
_ a> SPerrrrrrrrrrrrrr rrr eee F41G 7/00
DB GE, ccccsevecess 244/3.19; 244/3.16; 244/3.15
PUB CC SORTER 2. wc ccccccnecvevcccess 244/3.16 |
References Cited |
|

U.S. PATENT DOCUMENTS

4.303.211 12/1981 Dooley etal. ........ 244/3.19

OTHER PUBLICATIONS

50a

Waymeryer, W.K. and Macala, G.A., “Intercept Guidance
and Control Concepts Demonstration”, AFATL-TR-79-59,
pp. 74-79, Feb. 1978.

Yost, D.J., Weckesser, L.B. and Mallalieu. R.C.,
“Technology Survey of Radomes for Anti-Air Homing
Missiles”, FS-80-22, Johns Hopkins University Applied
Physics Laboratory, Mar. 1980.

Primary Examiner- Charles T. Jordan
Assistant Examiner- Theresa M. Wesson

ABSTRACT

In a missile which employs a terminal homing seeker and a
proportional navigation guidance law the space rate o f change
of boresight error, i.c., the boresight error slope, is one of the
predominant error sources.

It has been found that the boresight error slope is proportional
to the curvature of the secker open loop transfer
characteristic. Accordingly, the boresight error slope sensor
senses the curvature of the seeker open loop transfer
characteristic. This is accomplished by intermittently
dithering the seeker instantaneous field-of-view about the line
of sight at a rate too great for the normal tracking loop to
respond. Thus, the open loop transfer characteristic is
obtained while leaving the normal tracking loop unperturbed.
The curvature of the open loop transfer characteristic is then
obtained in real time by computing the “second difference”
from the measured open loop transfer characteristic.

4 Claims, 3 Drawing Sheets

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386016_0307%3A1. Public record. Not legal advice.