Amicus Curiae Brief — Administrator, Federal Aviation Administration v. Robertson

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No. 74-450 MAR 17 1975

MICHAEL RODAK, JR.,

IN THE

- Supreme Cont of the United States

OCTOBER TERM, 1974

ALEXANDER P. BUTTERFIELD, ADMINISTRATOR OF

THE FEDERAL AVIATION ADMINISTRATION, ET. AL

Petitioners

Vv.

REUBEN B. ROBERTSON, III AND JEROME B. SIMANDLE

Respondents

BRIEF AMICUS CURIAE OF MARY HELEN SEARS

EDWARD S. IRONS

1801 K Street, N.W.

Washington, D.C. 20006

Attorney for Mary Helen Sears

WILSON - EPES PRINTING Co.. INC. - RE 7-6002 - WASHINGTON. D. C. 20001

a ee

‘TABLE OF CONTENTS

Page

Authority To File | ; . , 1

Opinions Below 3 1

Constitutional and Statutory Provisions 1

Interest of Amicus : 2

- Summary of Argument | 3

Argument | 4

Conclusion 25

I

: TABLE OF AUTHORITIES

Cases Page

Alligeyer Vv. Louisiana, 165 U.S. 578 (1886) .......... 24

Anderson’s Black Rock v. Pavement Salvage Co.,

396 U.S. 57 (1969) sd Hy ps |

Atlantic Works v. Brady, 107 U.S. 192 (1883) bet 23

Blonder-Tongue Laboratories, Inc. v. University of

Illinois Foundation, 402 U.S. 318, 314 (1972).... 15, 21

Carrier Mfg. Co. Vv. Rex. Chainbelt, Inc., 281 F.

‘Supp. 717 (E.D. Wis. 1968) ...., 19

Concrete Appliances Co. V. Gomery, 269 U.S. 177

(1925) 18

Dow Chemical Co. v. Halliburton Oil Well Coment-

' ing Co., 324 U.S. 320, 326 (1945) ......,............... 18

Environmental Protection Agency v. Mink, 410

' US. 73 (1978) 10, 11

Felburn v. New York Central Railroad, 350 F.2d

416 (6, Cir. 1965) : 17

Goosby v. Osser, 409 U.S. 512 (19738) —.....0020000.... 24, 25

cree *, John, Deere Co., 383 U.S. 1, 18 (1966) .. 17, 19,

21, 24

Great A&P Tea Co. Vv. Supermarket Equipment

i Re 0 ial 21, 23

Greéne V. McElroy, 360 U.S. 474 (1959) ~............... 24

Hagans V. Lavine, 415 U.S. 528 (1974) -2.000000. 24, 25

Harris County Commissioners Court v. Moore, 43

U.S.L.W. 4223 24

International Glass Co. v. United States, 408 F.2d

a Pe ie RD adecinilicncretestrdsitiiimierncvoresce 17

James B. Clow & Sons, Inc. v. U.S. Pipe & Foun-

dry Co.,'313 F.2d 46 (5 Cir. 1963) —........0.......:. 19

Kay Products Corp. V. Martin Supply Co., 202 F.2d

47 (4 Cir. 1953) -.... 18

Kewanee Oil Co. v. Bicron Corp., 416 U.S. ——, 94

S.Ct. 1879; 40 L.Ed.2d 315 13, 19, 23

‘Lear, Inc. Vv. Adkins, 395 U.S. 653, 674 _............. 13, 21, 22

Package Devices, Inc. v. Sun Ray Drug Co., 301

F, Supp. 768 (E.D. Pa. 1969) aff’d 482 F.2d

272 (3 Cir. 1970) . 18

‘

as

ae ayy gee On en

Ill

TABLE OF AUTHORITIES—Continued

; Page

People of California v. Weinberger, 9 Civ., No. 73-

1494 (1974) nN EE RDA EER 1 AORN ea ANOS AOD 4

Renegotiation Board v. Bannercraft Clothing Co.,

Me NED iii sg 17

St. Regis Paper Co. v. United States, 368 U.S.

208 (1961) 22

Schechter v. Weinberger, 506 F.2d 1275 (D.C. Cir.

se ag LE LES LATE SEAL OTA TD 4

Serchuk v. Weinberger, 493 F.2d 663 (5th Cir.

1974) 4,10

Servo Corp. of America v. General Electric Co.,

337 F.2d 716 (4th Cir. 1964) cert. den. 383 U.S.

og A SCE SIGE EAE Cot ENTE POE 17

Smith v. Hall, 301 U.S. 216 (1987) 19

Stokes v. Brennan, 467 F.2d 699, 794 (5 Cir.

ig, NYC ESE SS i BNC ORO CARE TO 7

etch V. Weinberger, 495 F.2d 639 (3 Cir. 1974) . 4,10

ax Analysts and Advocates v. Internal Revenue

Service, 505 F.2d 350 (D.C. Cir. 1974) _....... 5,10

nited States Pipe & Foundry Co. v. Woodward

Iron Co., 327 F.2d 2442 (4 Cir. 1964) FED « ;

Wellford v. Hardin, 444 F.2d 21 9

Code of Federal Regulations (Patent Office Rules)

I I i 19

37 C.F.R. 1.108 19

Statutes :

5 U.S.C. § 552(a) (3) Beal 3, 18,17

a a aa od passim

5 U.S.C. § 552 (c) 6,9

26 U.S.C. § 6103 LOE EE MAO DT LO 6

35 U.S.C. § 102 16

35 U.S.C. § 103 16, 17

35 U.S.C. § 112 a ee

35 U.S.C. § 282 . 16

35 U.S.C. § 122 passim

IV o

TABLE OF AUTHORITIES—Continued

Page

GR UE. DD aeiiinisicshdiiiend passim

Internal Revenue Code § 613 (a) 5

P.L. 93-502 ; 6, 11

Wes TS TE, SAIS arnt erieriticeticinncgiia 9

_S. 478, 94th Cong., 1st Sess. (1975) ............-----.------ 16

Senate Report No. 818, 89th Cong., 1st Sess.

{REESE EATIE CDV. Cou COON oe oe Sear ero oer 7,9

Senate Report No. 1219, 88th Cong., 2d Sess.

(1964), S. 1666 8

Freedom of Information Act Amendments, S.R.

93-1200, 98d Cong., 2d Sess. 6

Freedom of Information Act Source Book Legis-

lative Materials, Cases, Articles, Sen. Doc. 93-

82, 93d Cong., 2d Sess. (1974) ................7, 8, 11, 12, 20

Freedom of Information Act Hearings Before

Subcommittee of Committee on Government Op-

erations, H.R. 938d Cong., 1st Sess., on H.R. 5425

& 4960, May 2, 7, 8, 10 and 16, 1978 -................... 6

Davis, “The Information Act: A Preliminary

Analysis” 34 U.Chic.L.R. 761 (1967) -...«.......... 6,9

Administration of the Freedom of Information

Act, H.R. 92-1419, 92d Cong., 2d Sess., Sept. 20,

1972 6

Stern, “A Reexamination of Preemption of Trade

Secret Law After Kewanee”, 42 Geo. W.L.R.

927 (1975) 14

McKie, “Proposals for an American Patent Opposi-

tion System in Light of the History of Foreign

Systems”, 56 J.P.0.S. 94 (1974) 16

Marquis, “Improving the Quality Control of Pat-

~ ents”, 59 Minn. L.R. 67, 79 (1974) ..............-.---- 19

“The Constitutional Standard of Invention—The

Touchstone for Patent Reform”, 1973 Utah L.R.

658, 672-674 24

wa |

IN THE

Supreme Court of the Pnited States

‘OCTOBER TERM, 1974

No. 74-450

ALEXANDER P. BUTTERFIELD, ADMINISTRATOR OF

THE FEDERAL AVIATION ADMINISTRATION, ET AL

Petitioners

\

Vv.

REUBEN B. ROBERTSON, III AND JEROME: B. SIMANDLE

Respondents

BRIEF AMICUS CURIAE OF MARY ‘HELEN SEARS

AUTHORITY TO FILE

This brief is filed pursuant to Rule 42(2) of this

Court. The letters of consent from both parties have been

lodged with the Clerk and are reproduced infra, p. la-2a.

OPINIONS BELOW

The opinion of the court. of appeals (Pet. App. A, pp.

1A-16A) is reported at 498 F.2d 1031. The order of

the district court (Pet. App. C, pp. 19A-20A) is not

reported.

CONSTITUTIONAL AND STATUTORY PROVISIONS

The Constitution, Article I, Sec. 8, Clauses 3 and 8

and Article VI, Clause 2.

2

The Freedom of Information Act, as amended, 5 U.S.C.

552(a) (3), (b) (3) and (c).

The Patent Code, Title 35 U.S.C. 102, 108, 122 and 282.

Section 1504 of the Federal Aviation Act of 1958, 49

U.S.C. 1504.

These provisions are reproduced infra, p. 3a.

INTEREST OF AMICUS

Amicus curiae is the petitioner in No. 74-584, a pres-

ently pending petition for writ of certiorari involving a

question identical to the question 1 before the Court.

Amicus will accordingly be directly affected by the result

of the case and hence wishes to be heard on points that

the parties are not expected to brief.

In particular, the parties to this case No. 74-450 will

not brief at least the following aspects of the identical

question :

(a) whether the 5 U.S.C. 552(b) (3) provision for

nondisclosure by the government of “matters specifically

exempted from disclosure by statute”, interpretation of

which is the focus of the common question presented by

the two petitions, is to be read in context with the

intent and purpose of each individual statute of the “100”,

more or less, contended by the government to thus

“specifically” exempt, rather than as a categorical gen-

eralization promulgated in furtherance of fostering over-

all governmental secrecy.

The specific statute involved, § 1104 of the Federal

Aviation Act, does not afford a sufficient scope of con-

stitutional, - historical, legislative or precedent back-

ground on which to brief or argue even a sampling of

the many individual federal policies which demonstrate

the incorrectness of the government’s broad scope argu-

ment in this case.

al

3

(b) important patent policy issues of fundamental

‘ constitutional importance subsumed in the identical ques-

tion presented as it arises in No. 74-584, but which will

not be briefed in this case because it involves only

federal aviation law and policies,

SUMMARY OF ARGUMENT

1. Congress, in adopting the Freedom of Information

Act, was faced with a large number of widely differing,

preexisting statutes pertaining to the disclosure of in-

formation by the various administrative agencies. The

Congress solved this problem in the FOI Act, by providing

(i) in 5 U.S.C. 552(b), a series of nine guidelines which

carefully define limits for the exercise of administrative

discretion to withhold information, whether pursuant to

statute or otherwise, and (ii) in specific exemption 8 of

§ 552(b) that only those statutes by which Congress itself

had “specifically exempted” material would afford a per

se statutory basis for withholding records otherwise sub-

ject to the disclosure provisions of § 552(a) (3). Had the

Congress proceeded otherwise to qualify under exemption

8 all preexisting statutes which permit nondisclosure of

requested records, the FOI Act would have been de-

vitalized ab initio.

2. The basic differences in the language, purpose and

legislative history of the several statutes contended by the

government to fall within exemption 3 underlines the

wisdom of the Congressional approach. The limited rec-

ord before this Court in this case, based solely on § 1104

of the FAA Act, precludes a reasoned analysis of all

such statutes and requires a strict construction of exemp-

tion 3.

3. The fundamental differences between the language

and purpose of § 1104 of the FAA Act specifically at

issue in this case and of § 122 of the Patent Code at

a

issue in No. 74-584 strongly emphasize the infeasibility

of a blanket ruling qualifying all so-called “discretionary”

statutes under exemption 3. These differences demonstrate

that such a ruling would, in the case of § 122, raise new

issues of constitutional dimension.

ARGUMENT

1. In No. 74-450, the government seeks a decision of

this Court which “will largely resolve the issue of [ex-

emption 3’s] application to nearly 100 statutes... .”'

which admittedly “differ widely” (P. Br. 12).

The Court is ill-equipped, in the narrow compass of

this case, to issue any such pervasive ruling. The “ques-

tion presented” is far broader than the single issue de-

cided below—i.e., the question of whether § 1104 of the

FAA Act qualifies under exemption 3 insofar as the

SWAP reports are concerned.

Although a plurality of other appellate decisions in-

- yolving the application of exemption 3 to other statutes

and other records were substantially concurrently ren-

dered, for various reasons—virtually in their entirety

attributable to the government’s acts—none of these de-

cisions are before this Court for review.’ Only this case—

1 Reply Memorandum for Petitioners, p. 3.

A similar gambit is attempted in No. 74-489, cert. granted Feb-

ruary 18, 1975, in which the first “Question Presented” invites

a broad ruling that exemption 6 “covers all personnel files” rather

than, as the exemption itself states, only those “the disclosure of

which would constitute a clearly unwarranted invasion of personal

privacy”.

2 The applicability of exemption 3 to 42 U.S.C. § 12306/a) is the

subject of at least four cases: Stretch v¥. Weinberger, 495 F.2d 609

(3 Cir. 1974) ; Serchuk v. Weinberger, 493 F.2d 693 (5 Cir. 1974):

Schechter v. Weinberger, 506 F.2d 1275 ( D.C. Cir. 1974); People

of California v. Weinberger, 9 Cir., No. 73-1494 ( 1974).

[Footnote continued on page 5}

5

preselected by the government as most likely to result in

the decision it seeks—is to be considered on its merits.

Because the many so-called “discretionary” statutes

having different language, purposes and legislative his-

tories, admittedly “differ widely” a blanket ruling quali-

fying all such legislation under exemption 3 is inappro-

priate." No such blanket ruling cannot soundly be

rendered on the basis of the limited record in No. 74-450

which involves only § 1104 of the FAA Act.

Congress was careful to avoid the hazards of such an

ill-considered approach. Recognizing that the many “dis

cretionary” statutes involved indeed “differ widely” and

that specific legislative reconsideration and modification

of each was impractical, Congress invoked the reasonable

alternative of (i) providing in exemption 3, that agency

withholding of records on statutory \grounds is permitted

only where, as a result of Congress’ own acts, the re-

quested material is “specifically” exempted by the statute

itself, and (ii) requiring that administrative discretion,

where countenanced by other statutes, be exercised strictly

within the limits defined by the remaining exemptions.

2 [Continued]

“The government does not intend to petition for a writ of cer-

tiorari in Serchuk or Schechter. . .”. Reply memo in Support of Pet.

for Cert. in No. 74-450, P. 2, n. 1. :

The applicability of exemption 2 to 25 U.S.C. § 122 is the sub-

ject of case No. 74-564. |

The application of exemption 2 to $613/c) of the Internal

Revenue ple is the subject of the decision Tax Analysts and Ad-

vocates ¥. Internal Revenue Service, 05 F.2d 250 (D.C. Cir. 1974) —

which conflicts with the Fourth Circuit's decision in Sears, supra.

See the Petition in No. 74-584 at pp. 20-21.

No petition for writ of certiorari has heen filed by the govern-

ment in Tax Analysts.

* See the Petition in No. 74-584 at pp. 18-20 and the “Petitioner’s

Emergency Motion for Immediate Disposition of Pending Peti-

tion for Writ of Certiorari” in No. 74-584 at pp. 2-3.

6

Consonant with this approach, Congress also enacted

§ 552(c) to make it clear that agency withholding of rec-

ords is not authorized “except as er stated” in

the FOI Act.

2. It is common ‘iouliie that “Not one executive

branch agency, not one government official testified in

favor of the [FOI] bill during the Subcommittee’s hear-

ings prior to its passage in 1966”.* Post-enactment,

agency resolve to defeat the Congressional purpose was

furthered by the Attorney General’s 1967 memorandum—

in fact a partisan brief—which “is not the law... it

reflects the point of view of the agencies, all of whom

opposed enactment’”.* Not surprisingly, under the aegis

of the Department of Justice, “The efficient application

of the Freedom of Information Act has been hindered by

5 years of foot-dragging by the Federal Bureaucracy”,

and “The nine exemptions in the Act which permit with-

holding of Snformation have been misused by the Federal

agencies,”

3. Contrary to the letter and purpose of the FOI Act,

the Attorney General’s memorandum states that the ref-

erence to “nearly 100 statutes” which appears in the

“The Freedom of Information Act’, Hearings Before Subcom-

mittee of Committee on Government Operations, H. R. 93d Cong.,

1st Sess., on H.R. 5425 and 4960, May 2, 7, 8, 10 and 16, 1973

(p. 2).

5 Davis, “The Information Act: A Preliminary —— 34 U.

Chic. L.R. 761 (1967).

* Administration of the Freedom of Information Act, H.R. 92-

1419, 92d Cong., 2d Sess., Sept. 20, 1972 (pp. 8; 11).

Congress has recently enacted P.L. 93-502 over the President’s

veto to limit exemptions 1 and 7 with a stated “intent to over-

ride” this Court’s unduly broad interpretation of exemption 1 in

Environmental Protection Agency Vv. Mink, 410 U.S. 73 (1973).

Freedom of Information Act Amendments, S. R. 93-1200, 93d Cong.,

2d Sess. (p. 12).

——s

7

non-authoritative House Report’ “apparently was in-

serted ... in reliance upon a survey [not otherwise identi-

fied] conducted by the Administrative Conference of the

United States in 1962” and on that basis speculates that

the intention of Congress was “to preserve whatever pro-

tection is afforded under other [than the FOIA] statutes

whatever their terms” (pp. 31-32).

In the present case, the government, in urging an

affirmative answer to the “Question Presented”, similarly

contends that exemption 3 covers “all material with re-

spect to which Congress by statute has provided for

nondisclosure, upon various terms, including statutes that

give government officials discretion to decide whether to

disclose” (P. Br. 2). Its brief adverts repeatedly to the

aforesaid “100 statutes” and insists that exemption 3

extends to all statutes which “specifically require or

permit nondisclosure of government information, without

regard to the circumstances” and “whether or not they

specify the particular documents to be kept confidential”

(P. Br.~10)* and that “under exemption 3 the only

function-of a reviewing court is to determine whether

there is a specific statute requiring or authorizing the

confidentiality of the material involved” (P. Br. 15).

These contentions totally conflict with Congress’ own

1974 restatement of its intent in adopting the FOI Act.

In. 1974, the Congress published the “Freedom of Infor-

mation Act Source Book” “designed to provide the public

with the arsenal necessary to obtain maximum disclosure

from the departments and agencies of the government”

(p. 8). Included in this “arsenal” is a “Discussion” and

“Summary” of the legislative history, as well as 113

pages of “Legislative Materials: Senate and House Re-

7It is settled that the Senate report (S. Rep. 813, 89th Cong.,

1st Sess. (1966)~is the more reliable. See Stokes v. Brennan, 467

F.2d 699, 794 (5 Cir. 1973) and cases cited.

® See also P. Br. 11, 12, 18 and 14.

ports and Debates”. It is careful to point out that the

Attorney General’s memorandum “should properly be

considered not part of the legislative history” (p. 9,

emphasis in original).* It emphasizes that:

“The first Congressional attempt to formulate a

general statutory plan to aid in free access occurred

in 1946....

“Soon after the 1946 enactment, it became appar-

ent that, in spite of the clear intent of Congress to

promote disclosure, some of its provisions were vague

and that it contained disabling loopholes which made

the statute, in effect, a basis for withholding infor-

mation.” (p. 3)

and that

“To remedy the weakness of existing law, the Sen-

ate Report [S. Rep. 1219, 88th Cong., 2d Sess.

(1964) ] stated the purpose of S. 1666 as: ‘.. . to

eliminate such phrases [giving administrators dis-

cretion to decide whether to disclose] to establish a

general philosophy of full agency disclosure unless

information is — under clearly delineated

statutory language. ...” (p. 4)*°

®Freedom of Information Act Source Book: Legislative Ma-

terials, Cases, Articles, Sen. Doc. 93-82, 93d Cong., 2d Sess. (1974),

p. 8 (footnote omitted)—hereinafter referred to as “Source Book”.

10 The pertinent portion of S. 1666, Sec. 3(c)(i), like exemption

3, specified that “(c) Each agency shall . . . make its records

promptly available except those which are (i) specifically exempt

from disclosure by statute”.

Senator Long’s pertinent comments as to Sec. 3(c) state:

“Section 3(c) contains the portion of the bill which has been

most extensively revised. It requires that all agencies’ records

be made promptly available except in those cases where such

records are: (1) specifically covered by a statutory exemption,

as in the case of individual income tax returns” [see 26 U.S.C.

§ 6103]. See infra, p. 6a-7a.

Senator Long’s comments quoted out of context at P.Br. 18

addressed a different Sec. 3(c) of S. 1666 are inapposite.

The government itself states “That legislative history of the

specific exemption involved, however, must prevail...” (P.Br. 21).

J

The very reference in the early legislative history

to “nearly 100 statutes” indicates strongly that the Con-

gress had no intention to continue the unbridled discre-

tion which these statutes, in common with the predecessor

information statute, vest in the administrative agencies.

Congress certainly recognized that to do so would defeat

ab initio the very purpose of the new Act.

Having no practical way to consider separately each

of the “nearly 100 statutes”, the Congress was careful

to make it clear:

(a) by § 552(c), that the Act “does not authorize the

withholding of information or limit the availability of

records to the public, except as specifically stated... . . —

(b) by exemption 3, that the only statutes which au-

thorize withholding are those in which Congress itself,

as distinguished from an administrator, “specifically”

“The purpose of this subsection [552(c) ] was to make it clear

beyond doubt that all materials of the Government are to be avail-

able to the public unless specifically allowed to be kept secret by the

exemptions.” S. Rep. 813, 89th Cong., Ist Sess. (1966). The

corresponding House Report 1497 is in full accord. It states that

“The purpose of this subsection [552(c)] is to make it clear beyond

doubt that all materials are to be made available to the public

unless specifically exempt from disclosure, by the provisions of

[the exemptions] or limitations spelled out in earlier sections”.

As the Fourth Circuit noted in Wellford v. Hardin, 444 F.2d 21,

24-25: ;

“A broad construction of the exemptions would be contrary

to the express language of the Act . . . Speaking of this pro-

vision [§ 552(c)], one commentator has said:

‘The pull of the word ‘specifically’ is toward emphasis

on statutory language and away from all else—away from

implied meanings, away from reliance on legislative his-

tory, away from needed judicial legislation’.

K. Davis, The Information Act: A Preliminary Analysis, 34 3

U. Chic. L. Rev. 761, 783 (1967) .”

“exempted . . . [the requested ‘naturel under clearly

delineated statutory language”, and \

(c) that the exercise of administrative discretion un-

der all other relevant statutes must be limited by and

find sanction in one or more of the ‘other exemptions.”

4. Congress has uniquely at pains to,make its intén- :

tions quite clear that the paramount disclosure objective

of the FOI Act is not to be subsumed an overbroad

interpretation of the nine exemptions. :

In 1978, after this Court’s generous interpretation, in :

Environmental Protection Agency Vv. Mink) 410 US. 73,

12 This is the view of at least the Third, Fifth hind District of

Columbia Circuits. See Stretch v. Weinberger, bas F.2d 639, (3

Cir. peice

. We agree, as did the district court, ‘ea the exempting

statute must prescribe some basis upon which, the Secretary

is to decide. Otherwise, there would be no pe from the

unacceptable conclusion that the word ‘specifically’, as used

in section 552(b) (3), is surplusage.” \

Serchuk v. Weinberger, 493 F.2d 663 (5 Cir. 1974) ; \Tax Analysts:

and Advocates v. Internal Revenue Service, 505 F. 2d 350 (D.C. Cir.

1974).

Petitioner’s brief incorrectly states that the Fourth Circuit, in -

No. 74-584 “agreed with the interpretation of exemption 3 in

Stretch” (p. 17, n. 16). In truth, the conflict in ‘the decisions of

the Third and Fourth Circuits “is direct and obvious”. See the .

Petition in No. 74-584, p. 21. The Fourth Circuit’s\\ pretended ~

“agreement” with the ruling in Stretch is sheer sophig ry. '

181t is facially apparent that § 1104 does not “specifically ex-

empt” the SWAP reports—and hence that exemption 3 ip not ap-

plicable. Thus, the “SWAP” reports, if they are to be su pressed,

must be shown to qualify under an exemption other thah 3, e.g.,

under exemption 4’s reference to “commercial .. . information

obtained from a person and .. . confidential”.

Based on the existing record, it appears that'the realistic ap-

proach in this case—if identifying information such as the\ names

of the involved airlines should be considered legitimately subject to

withholding—would be to delete only that information before re-

leasing the balance of the reports to the public. See n. 19, infra,

p. 14.

\

11

f

of exemption 1, Congress took immediate remedial steps.”

Included was the 1974 publication ‘of the “Source Book”,

\ which in its “Introduction” states: ee

“Most significantly, the courts appear to adopt and

reinforce at each opportunity the congressional in-

tent underlying passage of the Freedom of Informa-

tion Act. For, example, one Court of Appeals, after

ordering disclosure of documents requested by the

\ plaintiff but withheld by the government in a recent

case, observed:

*...‘... The touchstone of, any proceedings

under the Act must be the clear legislative in-

tent to assure public access to all governmental

records whose disclosure would not significantly

harm specific governmental interests. The policy

i

of the Act requires that the disclosure require-

\ ment be construed broadly, the exemptions nar-

rowly’.*

\\_“*Soucie v. David, 448 F.2d 106%, 1080 (D.C..,Cir.

1971)”

Consonant with its, “clear legislative intent” that the

“exemptions” are to be “construed... . narrowly”, the

Congress, over the President’s veto, enacted P.L. 93-502

with the clear, “intent to override the Supreme Court’s

holding in the case of EPA v. Mink.” ** ‘and to clarify

and restrict the scope of exemptions 1 and 7 where abuse

consequent from overboard construction contrary to the

‘policy of the Act was already manifest.

Unabashed, the government again appears before this

Court urging a broad construction of exemption 3 in

% The government emphasizes Mr. J ustice Stewart’s observations

in Mink, 410 U.S. at 95, note, that exemption 3 is ‘structured

similarly to exemption 1. See P. Br. 10, 15.

*° “Freedom of Information Act Amendments” s. Rep. 93-1200

93d Cong. 2d Sess. ; aa

12

clear derogation of the intent of Congress emphatically

reiterated less than one year ago.”

6. The circumstance that “the discretionary statutes

differ widely”, emphasized at P.Br. 12, et seq., argues

strongly against the government’s position that “By ex-

emption 3, Congress intended to continue the effectiveness

of all existing nondisclosure provisions” (P.Br. 18).

Per contra, Congress was careful, to avoid a stillborn

delivery of 'the FOI Act by expressly limiting exemption

_ 8 to only that material which Congress itself “specifically

exempted from disclosure by statute”. and by defining in

the remaining exemptions the outer limits for the exer-

cise of administrative discretion to suppress information

from the public.

“Tt should be emphasized that the exemptions to

the FOIA were not intended by Congress to be used

either to prohibit disclosure of information or to

justify automatic withholding of information. Rath-

er, they merely mark the outer limits of information

that may be withheld where the agency makes any

affirmative determination that the public interest and

the ‘specific circumstances presented dictate that the

information should be withheld. Agencies have been

slow to adopt this attitude, but enlightened judicial

decisions reflect this approach to interpreting the

force of the FOIA exemptions.” (Emphasis in orig-

inal; “Source Book”, p. 2)

6. Such an approach is essential to informed enforce-

ment of the FOI Act—a circumstance sharply underlined

by the conflicting’ considerations which are applicable to

(1) $1104 of the Federal'Aviation Act specifically at

% Similar government attempts to subvert the FOI Act’s broad

disclosure provisions by an overindulgent “interpretation” of its

narrow exemptions are found in No. 78-1233, National Labor Re-

lations Board v. Sears, Roebuck & Co. and No. 74-489, Department

of the Air Force v. Rose, cert. granted February 18, 1975.

»

13

issue in No. 74-450 and (2) to § 122 of the Patent Code

which is specifically at issue in No. 74-584.

According to the government, the public interest will

be compromised if § 1104 does not qualify under exem

tion 3 because public disclosure of the “SWAP” re

“will necessarily adversely affect [the airlines’] volun-

tary cooperation” with the FAA and “the SWAP pro-

gram will be seriously impaired” (P.Br. 26)." Z

In contrast, the public interest in the issuance of only

valid patent monopolies and the “strong federal policy

favoring full and free use of ideas in the public domain”,

Lear v. Adkins, 395 U.S. 653, 674 (1969), Kewanee Oil

‘Co. v. Bicron Corp., 416 U.S. ——; 94 S. Ct. 1879; 40

L, Ed.2d 315, 325 (1974), will continue to be seriously

prejudiced if § 122 does qualify under exemption 3. In-

deed, in such a case, a serious question of-the constitu-

tionality of both exemption 3 and § 122 is raised. .

Similar dichotomy unquestionably exists as to the whole

spectrum of “widely” different discretionary statutes.

- This circumstance, without more, precludes a blanket rul-

ing on any informed basis as to the scope of exemption

; 8. Indeed, there is no record before this Court upon

: which such a blanket ruling could properly be posited,

and in the absence of review of at least the other current

cases involving the application of exemption 3 to various

of these widely different statutes, no basis on which such

a record could be presented. See n.2, supra, p. 4.2

17 These arguments represent mere self-serving conclusions of

the FAA itself, and of the Air Transport Association, unsupported

by specific factual evidence. As such, they should be disregarded,

for failure to discharge the burden of proof imposed on the agency

by § 552(a)(3).

1* In these circumstances, a blanket ruling as to exemption 3 would

be subject to the same criticism as that recently leveled against the

decision in Kewanee, supra,—i.e., that it “ignored many of the

° critical issues, dealt with others by making factual assumptions con-

14

(a) The petition states that the respondents in No.

74-450 seek “reports prepared by the ... (FAA)” in

connection with the SWAP program “which supplements

the FAA’s ordinary surveillance of airlines’. . . and is

intended to prevent unsafe conditions from arising . . .”

and that “‘[t]he system depends upon the frank and

full disclosure of the airline” (Pet. 4-5). On this basis,

it is urged that any construction of exemption 3 which

would make the SWAP reports public “would severely

undercut the Federal Aviation Administration’s ability

to properly fulfill its investigative duties” and that “If

. those [SWAP] statements are to be made public,

the airlines have indicated that their concern over the

consequences of such disclosure will necessarily adversely

affect their voluntary cooperation. Without that coopera-

tion, the SWAP program will be seriously impaired”

(P.Br. 26).”

These considerations have no relevance whatever to the

issues arising in Case No. 74-584 under § 122 of the

Patent Code.

(b) In No. 74-584, petitioner seeks access to so-called

“abandoned” patent applications, i.e., applications filed

in the United States Patent Office on which patent protec-

tion has been refused or forfeited. The Fourth Circuit

trary to experience and the record before it. . .”. Stern, “A Reexami-

nation of Preemption of Trade Secret Law After Kewanee,” 42

Geo. W.L.R. 927, 930 (1975).

1° These arguments should be presented, if at all, as reasons for

deletion of material shown to be sensitive, e.g., the identity of the

airline involved, from the reports prior to production. They afford

no justification cognizable under the FOI Act for suppression of an

entire document. See § 2(c) of P.L. 93-502 requiring production of

“reasonably segregable” portions of records.

Clearly, these factually unsupported arguments do not justify

overturning the frequently reiterated intention of Congress that the

exemptions are to be construed “narrowly”, by a blanket ruling

qualifying under exemption 3 all of the many statutes “which permit

nondisclosure . . . without regard to the circumstances” (P.Br. 10).

15

Court of Appeals adopted a prohibited broad construction

of exemption 3 to hold that, although the statute does

mot in terms, i.e., “specifically”, refer to them, these

abandoned files are nevertheless “specifically exempted”

by § 122 which provides:

“Applications for patents shall be kept in confi-

dence by the Patent Office and no information con-

cerning the same given without authority of the ap-

plicant or owner unless necessary to carry out the

provisions of any Act of Congress or in such special

circumstances as may be determined by the Com-

missioner”.

In contrast to the FAA’s necessary reliance upon

“frank and full disclosure by an airline of all matters,

including problems and defects”, the inducement to file

patent applications is the hope of acquiring a valuable

asset—the private monopoly afforded by the patent laws.”

The success of the patent system does not depend upon

the suppression of the unpatentable ideas contained in

the abandoned applications of unsuccesful applicants. The

Patent Office “admits that the substance of some aban-

doned applications has become public knowledge”. The

agency has stipulated that “The Patent Office routinely

20 The Congress itself, in considering exemption 4, has recognized

that:

“A general principle should’ be considered, providing that

the exemption shall not apply to information furnished by any

person where the purpose of providing information is to secure

a special financial benefit or privilege [e.g., a patent] from the

fedaiel government.” op. cit. supra, n. 6, n. 6.

“‘The patent is a privilege . . . conditioned by a public purpose.’ ”

Blonder-Tongue Laboratories, Inc. v. University of Illinois Founda-

tion, 402 U.S. 318, 314 (1972).

21 Par. 25 of Answer to Complaint in No. 74-584 (App. I, pp. 13-

20).

16

maintains in secret abandoned applications, the precise

text of which has been laid open to public inspection”

and that the Patent Office makes no “effort to ascertain

whether or to what extent the subject matter of each

abandoned patent application has been made publicly

available’.*? Clearly, no Congressional purpose is served

by the total agency suppression of these abandoned files

under color of § 122.

A determination of whether § 122 is a statute which

“specifically exempts” under exemption 3 requires a care-

ful analysis of the evidentiary requisites of at least 35

U.S.C. §§ 102, 108 and 282 in light of the constitutional

patentability standards. Such an analysis compels the

conclusion that public access to abandoned patent appli-

cations is “necessary to carry out the provisions” of at

least these “Acts of Congress”. Hence, such applications

2 Stip. Pars. 26 to 29 (App. I, 42-53) in No. 74-584.

The practical experience in the United States and foreign coun-

tries contradicts the government’s argument, advanced without

record support below that publication of abandoned applications

may conflict with the policy of the patent clause by discouraging

inventors from applying for patents. For the first three-quarters

of the century of the operation of the patent system, abandoned

applications were published and were used as prior aft against

pending cases. As noted supra, the content of many abandoned

patent applications is now published—without adverse effect on

the patent system. Pending legislation to revise the United States

patent_Jaws would require the publication of virtually all patent

appli ons-pera ing and abandoned. See, e.g., S. 473, 94th Cong. Ist

Sess.; §§ 122; 185. Such revision accords with the long standing

practice in most foreign countries to publish applications with

leave to any member of the public to oppose the patent grant. See,

e.g., McKie, “Proposals For an American Patent Opposition Sys-

tem in Light of the History of Foreign Systems” 56 J.P.0.S. 94

(1974). The result in such countries has not been a decrease in

the number of applications filed, but an increase in the quality of

issued patents. See the Petition in No. 74-584, p. 28, n. 40 and

associated text..

17

are excluded from § 122’s confidence provisions by that

section’s own words of exemption.

In sharp contrast to the alleged adverse consequences

of publication of the SWAP reports on the administra-

tion of the FAA Act, the administration of the patent

laws is severely prejudiced by agency suppression of the

evidence germane to patentability which the abandoned

application files admittedly contain.

Thus, it is stipulated that “At least some abandoned

. . . applications are evidence of the level of skill in the

art... as of their filing date”,* i.e, the very yardstick

which this Court has twice stated is to be used in apply-

ing the “obviousness” standard of § 103 of the Patent

Act to the “differences” betwen the “prior art” and the

patent claims to gauge the presence of cohstitutionally

patentable invention. Graham v. John Deere Cv., 388

U.S. 1 (1966). Anderson’s Black Rock v. Pavement -

Salvage Co., 396 U.S. 57 (1969). Moreover, under the

presumed authority of § 122, the Commissioner not only

suppresses the “skill in the art” evidence (which need

not be public)** that is present in the abandoned files—

iy

*8 In fact, public access to abandoned application is “necessary to

carry out the provisions of § 553(a) (3) itself, which was enacted in

1967, some 15 years after the 1952 Patent law revision. _“The broad

language of the FOIA, with its obvious emphasis on disclosure and

with its exemptions carefully delineated as exemptions”, Renegotia-

tion Board v. Bannercraft Clothing Co., 415 U.S. 1 (1974), makes

it clear that “disclosure” is indeed essential to “carry out” its pro-

visions, absent clear, express and specific statutory authorization for

agency suppression. Rather than authorizing such suppression,

§ 122 itself deprives the Patent Commissioner of discretion and so

mandates publication of all material requisite to satisfy the dis-

closure objective of the FOI Act.

*« Stip. Par. 12, App. I, 35 in No. 74-584.

*8 International Glass Co. v. United States, 408 F.2d 395, 404

(Ct. Cl. 1969) ; Servo Corp. of America v. General Electric Co., 337

F.2d 716 (4 Cir. 1964), cert. den. 883 U.S. 934; Felburn v. New

York Central Railroad, 350 F.2d 416 (6 Cir. 1965) ; United States

Pipe & Foundry Co. v. Woodward Iron Co., 827 F.2d 442 (4 Cir.

. 18

but with premeditation also imposes “secrecy” to disqual-

ify unpublished abandoned patent applications as statu-

tory “prior art” under §102(a) and (b) on the sole

ground that because of the agency’s secrecy rule, the

suppressed applications are not “public” within the mean-

ing of these statutes. As the agency put it below “...

nonreliance by the Patent Office upon abandoned appli-

cations and preserving them in secrecy are opposite sides

of the same coin”.*

The net result of this—and other Patent Office rules of

expediency which compromise the meaningful examina-

tion of patent applications—is the “notorious difference

1964) ; Package Devices, Inc. v. Sun Ray Drug Co., 301 F.Supp. 768

(E.D.Pa. 1969), aff'd 432 F.2d 272 (3 Cir. 1970).

The unpublished activities of a plurality of individuals resulting

in substantially the same solution to substantially the same prob-

lem at substantially the same time has long been recognized as

cogent evidence that the “level of skill” in the pertinent art was

such as to preclude patentability. See Concrete Appliances Co. V.

Gomery, 269 U.S. 177 (1925) ; Kay Products Corp. v. Martin Supply

Co., 202 F.2d 47 (4 Cir. 1953). In Dow Chemical Co. v. Halliburton

Oil Well Cementing Co., 324 U.S. 320, 326 (1945), this Court, in-

validating the patent in suit, found that a private unpublished

report emanating from the Gypsy Oil Company was qualified as

evidence of the level of skill even if an “abandoned experiement

not amounting to anticipation.”

26'The Patent Office has stipulated that:

“1g. Abandoned U.S. patent applications which are referred

to in issued patents {and hewce publicly available] are relevant

when utilized by the Patent Office in examining patent appli-

cations for compliance with 35 U.S.C. 102 and 103 pursuant to

85 U.S.C. 131, 182 and 134, by the courts pursuant to 35

U.S.C. 141 to 146 inclusive in reviewing Patent Office de-

cisions and by the courts under 35 U.S.C. 281 and 282 in ad-

jadicating the validity of issued patents.” (App. I, 39 in No.

74-584).

—and indeed that:

“95. Under present practice of the Patent Office any docu-

ment which can be proved to be publicly available anywhere

in the world may be used as a reference against a pending

patent application. . . .” (App. I, 42 in No. 74-584).

~

19 ;

between the standards applied by the Patent Office and

the courts”, Graham, supra, 383 U.S. at 18; see Kewanee

Oil Co. v. Bicron Corp., 412 U.S. 546, 5— (1974)?

the consequent grant of “A significant number of patents

. . . for trivial inventions” and “the sagging reputation

of the patent system’’.*

7. Against this background, the Sesideenataley dif-

ferent language and purpose of § 122 of the Patent Act

and $1104 of the FAA Act are of controlling signifi-

cance. In § 122, Congress has expressly provided that

the statute’s discretionary “confidence” provisions. shall

not apply to any material

. «+ necessary to carry out the provisions of any

Act of Congress. . .”.?°

Under this provision—which has no counterpart in § 1104

—the Commisioner has no discretion to withhold any

such “necessary” material from the public or by the im-

27 In contrast to the Patent Office suppression thereof, the Federal

Courts routinely consider abandoned patent applications as evi-

dence germane to patentability (validity of issued patents) when-

ever it is available. See Smith v. Hall, 301 U.S. 216 (1937) and

Package Devices, Inc., supra.

Consonantly the courts routinely act to compel production for

use in patent litigation of both pending and abandoned patent

applications notwithstanding §122 and such rules as 37 C.F.R.

1.108 and 1.14. See, e.g., James B. Clow & Sons, Inc. v. United States

Pipe & Foundry Co., 313 F.2d 46 (5 Cir. 1963) ; Carrier Mfg. Co. v.

Rex. Chainbelt, Inc., 281 F.Supp. 717 (E.D. Wis. 1968).

The dichotomy between the Patent Office and the courts as to

the evidentiary effect of abandoned patent applications in the ad-

judication of patentability and patent validity questions is dis-

cussed at p. 22, et seq. of the Petition in No. 74-584.

28 Marquis, “Improving the Quality Control of Patents”, 59 Minn.

L.R. 67, 79 (1974).

*® The Fourth Circuit—unable to harmonize its holding that § 122

vests discretion in the Commissioner to suppress the very material

which this clear provision specifically excludes from any “confi-

_ ignored it. See Pet. in No. 74-584, p. 14, et seg.

20 : f

position of “secrecy”, to disqualify it as prior art cogni- |

zable under the patent laws.” :

This provision places § 122 in an entirely separate

_ eategory from statutes like §1104 which contain no

‘parallel words. This fundamental difference in the word-

pr and purpose of the involved statutes seriously chal-

lenges the propriety of a blanket ruling construing ex-

emption 3 broadly to include both § 1104 and § 122 as

the government urges.

Faced with problems of this type, Congress made no

effort to consider each of the “nearly 100 statutes” but

instegd provided in exemption 3 that only where the

statutes themselves “specifically exempt” is agency sup-

pression of any material on statutory grounds alone to

be permitted. To the extent that any of the “nearly 100

statutes” give government officials discretion to decide

whether to disclose’, that discretion is to be exercised

strictly within the limits defined by the other exemp-

tions which must be narrowly construed to insure that

the objectives of the FOI Act are realized. This Con-

gressional approach is reasonable and should be adopted

by this Court.”

8. Serious doubt as to the constitutionality both of

exemption 8 and § 122 arises under the Patent Clause of

8 As is apparent from the final, and alternative, discretionary

provision “or in such special circumstances as may be determined

by the Commissioner” to warrant disclosure.

81 The government states that “one strong indication that § 1104

was among the nondisclosure statutes Congress intended to preserve

in enacting exemption 3 is the fact that it was specifically mentioned

in a list of nondisclosure statutes submitted to Congress during the

1958 hearings ...” (P.Br. in 74-450, p. 11, 23-24).

It is much more reasonable to conclude that“Congress, almost

ten years later in 1967, did not wish to reexamine all of these stat-

utes and prescribe new guidelines for each—and hence left intact

only those statutes’ in which Congress :tself had already “specifically

exempted” identified material from disclosure. The 1974 “Source

Book” strongly supports this conclusion.

~ 21

the Constitution as these statutes are applied to permit

the continued suppression by the Patent Commissioner’

of evidence—admittedly contained in the abandoned files

—requisite to the discharge of his duty to grant private

monopolies for only those “inventions” which satisfy the

constitutional patentability standard.”

Nor can their application of exemption 3 and § 122 be

legitimatized on the pretext-of justifying “assurances”

by the Commissioner to unsuccessful applicants that the

unpatentable ideas, whether or not secret, which are con-

32 As held in Graham, supra, and restated in substance in Ander-

son’s Black Rock, supra, the patentability “standard expressed in

the Constitution . . . may not be ignored. And it is in this light

that patent validity ‘requires reference to a standard written into

the Constitution’. A&P Tea Co. v. Supermarket Corp., supra, 340

U.S. at 154... .” The constitutional patent clause “is both a grant

of power and a limitation”, a qualified authority . . . limited to

the promotion of advances in the ‘useful arts’”; the “Congress in

the exercise of the patent power may not overreach the restraints

imposed by the stated constitutional purpose”. Only “[w]Jithin the

scope established by the Constitution, Congress may set out condi-

tions and tests for patentability” 383 U.S. at 5, 6, 35 U.S.C.

§ 103 “comports with the constitutional strictures”, 383 U.S. at 17,

only if construed and applied in a manner to implement and not

to denigrate the constitutional patentability standard. It is stipu-

lated that “the constitutional standard for patentable invention .. .

[is] now codified in 35 U.S.C. 103” (Stip. Par. 23; App. 42).

In 1969, the Court in Lear v. Adkins, 395 U.S. 653, adverted to

the “demanding standard of invention explicated in our decision

in Graham v. John Deere Co.”, 395 U.S. at 676, and to “the im-

portant public interest in permitting full and free competition in

the use of ideas which are in reality a part of the public domain”,

395 U.S. at 670. In 1971, in Blonder-Tongue, supra, the Court

said:

. A patent yielding returns for a device that fails to meet

the congressionally imposed criteria of patentability is anomal-

ous... .”. 402 U.S. at 343.

22

tained in abandoned patent applications will be sup-

pressed from the public.”

Contrary to this approach, it is “the duty” of this

Court and of the Patent Office “to avoid a construction

that would suppress otherwise competent evidence unless

the statute, strictly construed, requires such a result”.

An “assurance” even by the President that “gives the

statute” a meaning which it does not require is totally

inoperative. See St. Regis Paper Co. v. United States,

368 U.S. 208, 219 (1961).

Nor can agency imposition of secrecy somehow be

justified on the speculative pretext of the protecting un-

identified trade secrets in those few abandoned applica-

tions which may disclose them.** The agency attempt to

88 The final agency denial of the Sears request for abandoned.

patent applications states that “in reliance on [§ 122] inventors

make full disclosure of their inventions in patent applications with

the assurance that the valuable trade secrets therein will be dis-

closed to the public only at the inventor’s option. . . .” (Pet. in

No, 74-584, p. 5, n. 4).

Contrary to this representation, Congress requires “full dis-

closure” of inventions in patent applications in 35 U.S.C. §112

which provides that “the specification shall contain a written de-

scription of the invention and of the manner of making and using

it in such full . . . terms as to enable any person skilled in, the art

. to make and use the same... .”

Agency application of § 122 to suppress nonsecret ideas clashes

head-on with the “strong federal policy favoring full and free

use of ideas in the public domain”, Lear v. Adkins, 395 U.S. at 674.

The agency nondisclosure “assurance” under color of § 122

clearly extends to nonsecret ideas. See the discussion supra, p. 15-16.

%4 The Patent Office has stipulated:

“Applicants do not record in writing or otherwise any identi-

fication of any alleged trade secrets in the patent applications

they cause to be filed.” (Stip. Par. 26, C. A. App. I, 19).

[Footnote continued on page 23]

oa

28

justify its unauthorized “assurance” on a “trade secret”

pretext is particularly anomalous since “The U.S. Patent

Office has no right under any statutory or constitutional

provision or on any other basis to recognize any sort of

proprietary right in subject matter it has adjudged un-

patentable” (Stip. Par. 51, App. I, 48 in No. 74-584).

§ 122 and exemption 3 are invalid as applied in this

manner to hobble the Patent Office in the discharge of

its sole legitimate mission of weeding out constitutionally

inadequate patent applications.

Patent Office subordination of the patent system to the

state law of trade secrets is precluded by the Constitu-

tion’s “limitation on the states .. . that in regulating the

area of patents and copyrights, they do not conflict with

the operation of the laws in this area passed by Con-

gress”. Kewanee, supra, 416 U.S. at ——, 40 L Ed 2d

at 324.

As this Court has recognized virtually from the be-

ginning, trivial and undeserving patents preempt the

skills essential to the normal “progress of science and

the useful arts” and hence are constitutionally precluded.

“‘To grant a single party a monopoly of every

slight advance made, except where the exercise of

invention, somewhat above the ordinary mechanical

or engineering skill, is distinctly shown, is unjust

in principle and injurious in its consequences.” A&P

Tea Co. v. Supermarket Equipment Corp., 340 U.S.

147, 155 (1950), quoting Atlantic Works v. Brady,

107, U.S. 192, 199-200 (1883). (Mr. Justice Douglas

34 [Continued]

When pressed to discharge its burden under § 552(a) (3) to show

that any abandoned patent application contained a trade secret,

the Patent Office, by a post-trial motion, confessed that at most, only

24% of abandoned applications may contain trade secrets—and

so admitted that at least 76% did not. See the Petition in No.

74-584, pp. 11-12, including n. 16.

24

concurring ; the concurring opinion in A&P was

adopted in explication of the constitutional patent-

ability standard in Graham, supra, and reiterated i in

Anderson’s Black Rock, supra.)

“It was never the object of those [patent] laws to

grant a monopoly for every trifling device’, id., for such

monopolies impede the fundamental right of every citizen

to the free exercise of ordinary skills in the pursuit of

a calling. Greene v. McElroy, 360 U.S. 474 (1959); see

also Allgeyer v. Louisiana, 165 U.S. 578, 589-590 (1886)

and so contravene the substantive due process standard

of the Fifth Amendment.”

9. These constitutional questions must be squarely faced

and promptly resolved in a proper three-judge forum if

exemption 3 is afforded the blanket, broad construction ’

requested by the government whereby all statutes—in-

cluding § 122—are qualified “which specifically require

or permit nondisclosure without regard to the circum-

stances” and “whether or not they specify the particular

documents to be kept confidential” (P. Br. 10), thus

reducing the “function of the reviewing court to [de-

terming] whether there is a ‘specific statute requiring

or authorizing the confidentiality of the material in-

volved” (P. Br. 15). Hagans v. Lavine, 415 U.S. 528

(1974); Gooeby v. Osser, 409 U.S. 512, 518 (1973).%

85 See “The Constitutional Standard of Invention—The Touch-

stone for Patent Reform;” 1973 Utah L.R. 653, 672-674.

* As recently as February 18, 1975, the Court has pointed out

“We recently stated ‘claims are constitutionally insubstantial

only if the prior decisions inescapably render the claims frivo-

lous; previous decisions that merely render claims of doubtful

or questionable merit do not render them insubstantial for the

purpose of 28 U.S.C. § 2281.’ Goosby v. Osser, 409 U.S. 512,

518 (1973).” Harris County Commissioners Court v. Moore—

43 U.S.L.W. 4223, 4224, n. 6.

The Fourth Circuit in No. 74-584 misstated and then, in the

guise of pronouncing them insubstantial, adje icated the merits

oe

CONCLUSION |

The decision of the Court of Appeals in No. 74-450

should be affirmed. This Court should follow the lead

of Congress to hold that exemption 3 does not broadly.

include all of the widely different “discretionary’’ statutes

which either permit or require any administrative. agency

' to suppress material from the public. As exemption 3

states in terms, only those statutes which themselves

“specifically” exempt material are subject to its pro-

visions. The exercise of administrative discretion under

_ other statutes must find sanction in one or more of the

other exemptions.

/ i

EDWARD S. IRONS

: | Counsel for: Petitioner

in No. 74-584.

‘\

of petitioner’s constitutional claims—all without a semblance of a «

“prior decision” which “in ly renders” them “frivolous” and

pointedly without reference to either Goosby or Hagans. A Request

for Reconsideration stressing the appellate court’s non-compliance

. With the rule enunciated in Goosby and Hagans was summarily

denied. See the Petition in No. 74-584, pp. 16a to 19a, and the ©

discussion at pp. 14-18 and 22-28.

The Petition in No. 74-584 is being supplemented to focus more

directly on this issue in view of the review granted in No. 74-450,

coupled wjth the February 18, 1975 denial of the Motion to Expedite

Consideration of the Petition.

*