422 F.2d 326 (3rd Cir. 1970), 18002, Zimmerman v. United States Government

Docket Nº:18002.
Citation:422 F.2d 326, 165 U.S.P.Q. 33
Party Name:Theodore ZIMMERMAN, Appellant, v. The UNITED STATES GOVERNMENT, United States Department of Commerce, PatentOffice, Washington, D.C.; Edwin L. Reynolds, First Assistant Commissioner; Mr.L. H. Baer, United States Civil Service Commission Regional Director; PicatinnyArsenal;Isadore G. Nadel; Sidney Bernstein; and Joseph Fillipone.
Case Date:February 19, 1970
Court:United States Courts of Appeals, Court of Appeals for the Third Circuit
 
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Page 326

422 F.2d 326 (3rd Cir. 1970)

165 U.S.P.Q. 33

Theodore ZIMMERMAN, Appellant,

v.

The UNITED STATES GOVERNMENT, United States Department of Commerce, PatentOffice, Washington, D.C.; Edwin L. Reynolds, First Assistant Commissioner; Mr.L. H. Baer, United States Civil Service Commission Regional Director; PicatinnyArsenal;Isadore G. Nadel; Sidney Bernstein; and Joseph Fillipone.

No. 18002.

United States Court of Appeals, Third Circuit.

February 19, 1970

Argued Jan. 8, 1970.

Theodore Zimmerman, pro se.

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Ronald R. Glancz, Department of Justice-Civil Division, Washington, D.C., (William D. Ruckelshaus, Asst. Atty. Gen., Frederick B. Lacey, U.S. Atty., Morton Hollander, Attorney, Department of Justice, Washington, D.C., on the brief), for appellee.

Before BIGGS, VAN DUSEN and ALDISERT, Circuit Judges.

OPINION

ALDISERT, Circuit Judge.

Presented here is the question whether the district court had jurisdiction to review a determination by the Commissioner of Patents that the government is entitled to a royalty-free license in appellant's invention. The district court answered this question in the negative and dismissed for want of jurisdiction. We affirm.

Appellant is a federal civil service employee assigned as a chemical engineer to the Department of the Army. Following his invention of a waterproof combustible cartridge case, the Army determined that 'pursuant to paragraph 1(b) of Executive Order 10096, * * * the entire right, title and interest in the invention be left with the inventor, subject to a non-exclusive, irrevocable, royalty-free license to the Government with power to grant licenses for all Government purposes.' The Commissioner of Patents affirmed this decision on June 8, 1967, and twice denied reconsideration. Appellant then filed his Complaint in the court below 'demand(ing) that he alone be assigned exclusive rights' in the invention, and seeking declaratory and injunctive relief. Prior to the institution of this action, appellant filed an application for a patent which is still pending.

We think it necessary to observe at the outset that the district court's characterization of this action does not control our disposition of the case. At the hearing on the government's motion to dismiss, the trial judge expressed his understanding that the claim was essentially for money damages rather than equitable relief. 1 Taking this view of the case, we would certainly agree that the Court of Claims would be the appropriate forum for a properly timed action. 28 U.S.C. § 1498(a) provides that once a patent has issued on an invention which is thereafter 'used or manufactured by or for the United States without license * * * or lawful right * * *, the owner's remedy shall be by action against the United States in the Court of Claims for the recovery of his reasonable and entire compensation for such use and manufacture.' 2 And in certain circumstances, '(a) Government employee shall have the right to bring suit against the Government (in the Court of Claims) under this section.' By brief and argument to this court, however, the government has acknowledged that appellant is not directly or obliquely seeking 'compensation' from the United States.

That appellant is asking for equitable relief does not, however, remove from our consideration the impact of section 1498. Prior to the 1952 amendment to this section, Congress had provided that 'this section shall not confer a right of action on any patentee who, when he makes * * * a claim (for compensation), is in the employment or service of the United States, * * * and shall not apply to any device discovered or invented by an employee during the time of such employment or service.' Thus, until the 1952 revision, an employee of the government could not maintain a suit against the United States for a determination of rights in an employee invention. Myers v. United States, 177 F.Supp. 952, 953 (Ct.Cl.1959) .

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See Moore v. United States, 249 U.S. 487, 39 S.Ct. 322, 63 L.Ed. 721 (1919). Moreover, the legislative history of the revision confirms the Congressional view that government employees-patentees did not have a cause of action against the government prior to 1952. The House Judiciary Report stated: 'Section 1498 of title 28 was written into the act of June 25, 1910, * * * to prevent a Government employee who made an invention in the course of his official duties from maintaining a claim for the use of the invention by the Government.' 3 And the Report makes it clear that the amendment was specifically designed to permit suits against the United States in the Court of Claims: 'The 1952 amendment) will * * * permit a Government employee who makes an invention completely outside of his official function to maintain a suit against the Government.' 4

In sum, the revision to section 1498 conferred upon government employees-patentees a right of action against the United States that previously had been nonexistent. Congress thereby relinquished governmental immunity and consented to suit in the Court of Claims in carefully circumscribed situations where the invention was not related to the official functions of the employee, or where government time, facilities, or materials were not used. 5

We believe that this remedy was intended to be exclusive. First, it is the only remedy created in an area in which the government traditionally has been completely immune from suit. Second, closely related cases in which non-government employees have sought compensation from the United States through patent infringement suits in district courts have held that section 1498...

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