Irons v. Gottschalk, 74-1365

• Decision Date: 08 March 1977
• Docket Number: No. 74-1365,74-1365
• Citation: 179 U.S.App.D.C. 37,548 F.2d 992
• Parties: , 191 U.S.P.Q. 481 Edward S. IRONS, Appellant, v. Robert GOTTSCHALK, Commissioner of Patents.
• Court: U.S. Court of Appeals — District of Columbia Circuit

Page 992

548 F.2d 992

179 U.S.App.D.C. 37, 191 U.S.P.Q. 481

Edward S. IRONS, Appellant, v. Robert GOTTSCHALK, Commissioner of Patents.

No. 74-1365.

United States Court of Appeals, District of Columbia Circuit.

Argued Dec. 11, 1975.

Decided Oct. 21, 1976.

Rehearing Denied March 8, 1977.

Mary Helen Sears, Washington, D. C., for appellant.

Barbara L. Herwig, Atty., Appellee Section, Civ. Div., Dept. of Justice, Washington, D. C., with whom Rex E. Lee, Asst. Atty. Gen., Earl J. Silbert, U. S. Atty. and William Kanter, Atty., Appellate Section, Civ. Div., Dept. of Justice, Washington, D. C., were on the brief for appellee. Stephen F. Eilperin, Atty., Dept. of Justice, Washington, D. C., also entered an appearance for appellee.

Before TOM CLARK, ^* Associate Justice of the Supreme Court of the United States (Ret.), BAZELON, Chief Judge, and ROBINSON, Circuit Judge.

Opinion for the Court filed by Mr. Justice Clark.

Mr. Justice CLARK:

Appellant, Edward S. Irons is here on a return engagement in his six-year effort to secure disclosure of "all the unpublished manuscript decisions of the Patent Office" under the Freedom of Information Act. 5 U.S.C. § 552, et seq. It was in 1970 that the District Court refused disclosure on the ground that the request had not been focused on "identifiable records"; however it did direct the Commissioner of Patents to make public the indices of such manuscript decisions that had been made since the effective date of the Act, July 4, 1967, which significantly commemorated our Independence Day. Irons v. Schuyler, 321 F.Supp. 628 (1970). On appeal this court upheld the finding that the request was not one for "identifiable records" but remanded for a determination of Iron's request for the indices of decisions made prior to July 4, 1967. Irons v. Schuyler, 151 U.S.App.D.C. 23, 465 F.2d 608, cert. denied 409 U.S. 1076, 93 S.Ct. 682, 34 L.Ed.2d 664 (1972). On remand, the district court ordered that the indices for 144 volumes of patent materials be furnished; however, the 31 remaining bound folio volumes, covering the years 1923-1954 and not having any indices, were not included in the order; nor were the unbound files for the remaining years to 1967. The district court denied a rash of motions, all the way from one to file an amended complaint ¹ to two motions for contempt based on the Commissioner's routine destruction of docket cards and file wrappers and his decision to index only the final opinions of the Patent Office under the court's order to furnish indices on post-1967 manuscript decisions. ² 369 F.Supp. 403 (1974).

Upon the filing of this Order (January 10, 1974), appellant moved to vacate it, to re-open the proceedings, and to disqualify the district judge on the ground that a member of the court staff had made an informal inspection of the Patent Office warehouse and the materials appellant had requested, unaccompanied by appellant or his counsel. In denying the motion on March 16, 1974, the district court said:

The Court, in its effort to reach a just and expeditious conclusion to the matter, made a physical inspection of certain items to assure that the relief granted January 10, 1974, (release of the indices to bound manuscript decisions) was both physically possible and meaningful to plaintiff. The Court finds no element of prejudice to the plaintiff in the action of November 30, 1973 (The date of the visit to the warehouse by a member of the district court's staff).

This appeal covers both the January 10th Order as well as the one dated March 11, 1974, and seeks "vacation of any residue of the decision below and remand for a fair hearing before a different judge."

1. Issues on this appeal :

The appellant raises no less than eight issues. He argues that (1) all 175 bound folio volumes of Patent Office decisions covering the years 1853-1954 and the decisions since the enactment of the Freedom of Information Act in 1967 must be made publicly available; (2) all documents capable of being used as indices to locate manuscript decisions, including file wrappers and docket cards must be made publicly available, with exempted information blocked out in lieu of withholding the entire document; (3) the Commissioner of Patents' destruction of docket cards subsequent to the filing of appellant's complaint was contempt of this Court and the district court; (4) this Court's earlier ruling in Irons v. Schuyler, 465 F.2d 608 (1972), was in error because the Commissioner's misrepresentations about the identifiability and scope of appellant's request, and if not, then the amendment to 5 U.S.C. § 552 enacted by Congress on November 21, 1974, overruled this Court's decision in Irons v. Schuyler, supra ; (5) the district court improperly revised, sua sponte, its earlier order, affirmed by this Court, by limiting the post-1967 indices to § 552(a)(2)(A) material; (6) the Commissioner's failure to index § 552(a)(2)(B) and (C) materials was contempt of the district court; (7) the district judge deprived appellant of due process and a fair hearing by refusing the amended complaint, refusing oral examination of the Commissioners' counsel, denying summary judgment, considering Commissioner's sworn and unsworn testimony after his earlier affidavit was shown to be false in part, and engaging in ex parte contact with the Patent Office and subsequently refusing to recuse himself and vacate his orders because of such contact; (8) the decision below is void because of the ex parte contact with the Patent Office, the refusal to allow oral examination of the Commissioner's counsel, and the entry of judgment based upon ex parte findings and the inadmissible statements of the Commissioner's counsel.

We have carefully canvassed these issues and find only two have merit: (1) Whether the 175 volumes of manuscript decisions are exempt from disclosure under the Freedom of Information Act, 5 U.S.C. § 552, et seq.; and (2) should the district court have allowed the filing of the amended complaint.

2. The Scope and Extent of the Patent Exemption, 35 U.S.C. § 122 :

The Freedom of Information Act, 5 U.S.C. § 552 et seq., provides that certain documents and materials are exempt from its mandates. Among these exemptions is the one provided for records "specifically exempted from disclosure by statute," § 552(b)(3). ³ The patent act makes specific provision for the confidentiality of patent applications, 35 U.S.C. § 122:

Applications for patents shall be kept in confidence by the Patent Office and no information concerning the same given without authority of the applicant 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 Commissioner.

The district court held that 35 U.S.C. § 122 exempts from disclosure the 175 volumes of manuscript decisions as portions of pending or abandoned application files, but that the indices to those volumes, where available must be made public in order to assist appellant and others in the drafting of specific requests that may or may not be subject to the exemption. Admittedly, nonexempt materials exist among the volumes' contents. The district court, therefore, refused to authorize examination of the volumes on the basis of appellant's broad request. In view of the fact that the appellant could not formulate a more specific request under the circumstances, a matter to be discussed in some detail infra, we respectfully disagree with the conclusions reached by the district court.

At the outset, it is well that we first reiterate this Circuit's prior determination that:

The District Court did not hold, nor do we, that the manuscript decisions of the Patent Office are exempt, as such, from disclosure.

Irons v. Schuyler, 151 U.S.App.D.C. 23, 465 F.2d 608, 614 (1972). The provisions of the patent act itself permit the publication of patents that have been granted and the specifications and drawings of those patents, 35 U.S.C. § 11(a)(1). We thus reserve for some later determination the question of whether § 122's declaration of confidentiality for patent applications extends to successful applications and manuscript decisions involving the same. On the other hand, the 175 volumes sought by the appellant contain manuscript decisions with "information concerning" pending and abandoned patent applications. The applications themselves are clearly protected by § 122. Sears v. Gottschalk, 502 F.2d 122 (4th Cir. 1974).

In Sears, counsel for appellant here sought to require disclosure of "all abandoned U.S. patent applications". The request was not significantly different in form from the original request of appellant in this case for "all unpublished manuscript decisions of the Patent Office." The Fourth Circuit examined the legislative history of 35 U.S.C. § 122 and came to the conclusion that abandoned and pending patent applications were not subject to disclosure under the Freedom of Information Act, 5 U.S.C. § 552 et seq. because of the 35 U.S.C. § 122 exemption. Id. at 130-1.

The instant case, however, presents a somewhat different problem. Appellant seeks disclosure of manuscript decisions made by the Patent Office, some of which will reveal quotations from and detailed knowledge of protected pending or abandoned patent applications, but none of which contain the abandoned or pending patent applications in toto that Sears found protected by § 122. Thus, we face the question of whether § 122 specifically exempts manuscript decisions of the Patent Office within the scope of 5 U.S.C. § 552(b)(3), when those manuscript decisions reveal salient portions and detailed knowledge of the confidential abandoned or pending patent applications. In short, we must interpret the "information concerning" clause of Section 122.

The purpose of the Freedom of Information Act was to ensure by statute the Government's broad obligation to provide its citizens access to its information. The Act's language is broad,...