International Tel. & Tel. Corp. v. United States

• Decision Date: 16 June 1976
• Docket Number: No. 263-73.,263-73.
• Citation: Int'l Tel. & Tel. Corp. v. United States, 536 F.2d 1361 (Fed. Cl. 1976)
• Parties: INTERNATIONAL TELEPHONE AND TELEGRAPH CORPORATION and International Standard Electric Corporation v. The UNITED STATES et al., Third-Party Defendants.
• Court: U.S. Claims Court

536 F.2d 1361

INTERNATIONAL TELEPHONE AND TELEGRAPH CORPORATION and International Standard Electric Corporation v. The UNITED STATES et al., Third-Party Defendants.

No. 263-73.

United States Court of Claims.

June 16, 1976.

Paul M. Craig, Jr., Washington, D.C., attorney of record, for plaintiffs; Melvin Kraus, Washington, D.C., of counsel.

Robert H. Plotkin, Washington, D.C., with whom was Asst. Atty. Gen. Rex E. Lee, Washington, D.C., for defendant; Vito J. DiPietro, Washington, D.C., of counsel.

Before COWEN, Chief Judge, DURFEE, Senior Judge, and KASHIWA, Judge.

OPINION

PER CURIAM.

This case comes before the court on defendant's request for review, pursuant to Rule 53(c)(3), of the opinion of Trial Judge Colaianni on the issue as to whether the application of the statute of limitations to plaintiffs' claim is tolled by 35 U.S.C. § 286. Upon consideration of the briefs and arguments of counsel, the court agrees with the trial judge's opinion, but we add the following:

In cases involving a statutory ambiguity similar to the one involved in this case, federal courts have allowed the expressed intention of Congress or a state legislature to prevail over the alleged plain-meaning of a statute. See Southeastern Financial Corp. v. Smith, 397 F.Supp. 649 (D.Ala. 1975); Fleming v. Salem Box Co., 38 F.Supp. 997 (D.Ore.1940).¹

In Fleming, the court refused to accept at face value a specific reference in section 17 of the Fair Labor Standards Act of 1938 to section 20 of the Anti-Trust Act. After examining the legislative history of the Fair Labor Standards Act, the court concluded that

a mistake was made in the substitution of the figures and that the intention was to refer to Section 17 of the Anti-Trust Act. A palpable clerical error clearly shown should not override legislative intention. 38 F.Supp. at 998.

In Southeastern Financial Corp. v. Smith, supra, an assignee of the accounts receivable of a carpet seller brought an action against an individual who signed a check given in payment of an account of a corporate carpet purchaser. Any recovery by the plaintiff had to be under a particular Alabama state law enacted in 1959 as "Act 567." After its enactment, Act 567 had been unofficially codified at Title 39, § 53(1) of the Alabama Code. Subsequently, when the Alabama legislature adopted the Uniform Commercial Code, it purported to repeal, inter alia, "Title 39, §§ 1-12, inclusive, § 13, as amended, §§ 14-85, inclusive * * *." 397 F.Supp. at 654. The court observed that, on its face, this reference would seem to include Act 567. However, since no act of the Alabama legislature had been officially codified since the Alabama Code of 1940, the court concluded that

all references in subsequent acts to Code provisions must be construed as applying only to the Code as it was codified in 1940, not as it might have been unofficially recompiled or recodified by the Code publisher. Thus, an act passed subsequent to the adoption of the Code of 1940 could be repealed only by specific reference to the act by number and year of adoption. That this is the understanding of the Alabama Legislature may be inferred from the repealing provision cited above, since the provision specifically repeals, in addition to the recited Code sections, a number of acts adopted subsequently to the 1940 Code. These later acts are repealed by reference to the act number and year of enactment. Therefore, it would stretch the legislature's intent to view the repeal of "§§ 14-85, inclusive," as repealing Act 567.

Nor can it be inferred that this act was repealed by implication. This is a disfavored method of appeal sic, and "it is only when two laws are so repugnant to or in conflict with each other that it must be presumed that the Legislature intended that the latter repealed the former." City of Birmingham v. Southern Express Co., 164 Ala. 529, 538, 51 So. 159, 162 (1909). Since the UCC provides contractual remedies while the statute here provides a tort remedy, there is no reason to assume that the legislature intended to repeal the latter by adoption of the UCC. 397 F.Supp. at 654.

We conclude, therefore, that the legislative history, including the reports of the committees of the House and Senate, and the express language of Pub.L. 313, H.J.Res. 423, 82d Cong., 2d Sess. — all as set forth in the trial judge's opinion — demonstrate that Congress did not intend to repeal, and did not repeal, 35 U.S.C. § 91 by the enactment of Pub.L. 313 or the other Acts relied upon by defendant. Accordingly, the trial judge's opinion and conclusions of law are hereby affirmed and adopted as the opinion of the court; defendant's request for review is denied, and the case is remanded to the trial judge for further proceedings.

OPINION OF TRIAL JUDGE

COLAIANNI, Trial Judge:

By motion of June 26, 1974, plaintiffs sought a separate trial on the issue of tolling of the time limitations on damages or, in the alternative, for a trial on additional infringements during a period more than 6 years prior to the filing of the petition. Plaintiffs' motion points out that the parties disagree on the applicability of 35 U.S.C. § 286 to the present case.

Section 286 of Title 35 U.S.C. tolls the 6-year limitation on damages for infringement of a patented invention for a period of up to 6 years between the filing of a claim for compensation with a department or agency of the Government that has authority to settle such claim and the date of denial of that claim.

Plaintiffs argue, in the numerous papers filed in support of their motion, that defendant's liability for procurement is not limited by 28 U.S.C. § 2501 to the 6 years immediately preceding the filing of their August 14, 1973, petition, but rather that the accounting period should extend back an additional 6 years because of plaintiffs' filing of an administrative claim with the Federal Aviation Administration (hereinafter referred to as "FAA") and/or the Coast Guard.

Defendant, in the various papers it has filed in opposition to plaintiffs' motion, argues that the FAA and the Coast Guard, now agencies of the Department of Transportation, did not have authority to settle administrative claims for patent infringement at the time of plaintiffs' "negotiations" with them.

Plaintiffs contend, to the contrary, that section 3 of the Royalty Adjustment Act of 1942 (hereinafter referred to as the "RAA") gives all departments and agencies of the Government the authority to settle claims arising out of the use of patented inventions. Plaintiffs thus urge that section 3 of the RAA authorized administrative settlement of claims between them and the FAA and/or the Coast Guard. Plaintiffs further contend that the years spent in attempting to settle their claims with the above agencies, up to 6 years, should, in accordance with the letter and spirit of 35 U.S.C. § 286, be tacked on to the 6-year accounting period defined by 28 U.S.C. § 2501.

While it appears at first blush that the question of whether or not plaintiff's settlement discussions tolled the application of the 6-year time limitation on damages established by 28 U.S.C. § 2501 could be deferred to an accounting trial following the establishment of defendant's liability, plaintiffs point to the fact that different accused structures were purchased by defendant during the period immediately preceding August 14, 1967, from those after that date. Thus, different proofs will have to be submitted at trial to prove plaintiffs' claims of infringement for the 12-year period prior to the filing of their petition in this court. If the statute of limitations were not tolled, however, the procurement prior to August 14, 1967, would be of no moment and thus irrelevant to the pending litigation. Accordingly, it becomes necessary to establish whether or not the FAA and/or the Coast Guard had authority to settle administratively claims of infringement at the time of plaintiffs' negotiations.

Defendant raises a number of arguments to refute plaintiffs' contention concerning the present viability of section 3 of the RAA. The more serious of these are that:

1. The entire RAA was intentionally included in the * * * Emergency Powers Continuation Act, hereinafter referred to as the "EPCA" although drafts thereof, Executive Branch requests therefor, and the Interim EPCA included only Sections 1 and 2 thereof.

2. The legislative history of the EPCA and of the EPCA extensions show that the effect of Section 1(a) of that law was to repeal those statutes listed therein.

* * * * * *

5. Title 35, U.S.Code is a positive statement of the law and the absence therefrom of Section 91 is conclusive of the lack of effectiveness since July 1, 1953 of RAA Section 3.

* * * * * *

8. The Government Procurement Commission, the editors and compilers of the U.S.Code and the U.S.Code Annotated, and the Comptroller General were all correct in their opinions that:

a. There is a lack of authority to administratively settle claims for patent infringement in Government agencies other than the Defense Department, and

b. The Royalty Adjustment Act, 35 U.S.C. (1946 ed.) §§ 89-96, expired on July 1, 1953.

As explained hereinbelow, defendant's arguments are found to be unpersuasive, and it is concluded that 35 U.S.C. §§ 91-96 (1946 ed.) is permanent legislation which was not repealed by the Emergency Powers Continuation Act, Pub.L. 450, 82d Cong., 2d Sess.

Background

The Royalty Adjustment Act of 1942, containing sections 1-10, was enacted as Pub.L. 768 during the 77th Congress. Sections 1 through 8 of that act were later codified as 35 U.S.C. §§ 89-96 (1946 ed.). Sections 9 and 10, the act's savings clauses, were included by a note following § 89.

Sections 89 and 90 of Title 35 provided that an agency was to inform a licensor whenever its head found that a patented or unpatented invention was being manufactured, used or sold for the United States under a license calling for the payment of royalties which h...