Mead Corp. v. United States

• Decision Date: 30 May 1980
• Docket Number: Civ. A. No. 79-1668.
• Citation: 490 F. Supp. 405
• Parties: MEAD CORPORATION et al., Plaintiffs, v. UNITED STATES et al., Defendants.
• Court: U.S. District Court — District of Columbia

490 F. Supp. 405

MEAD CORPORATION et al., Plaintiffs, v. UNITED STATES et al., Defendants.

Civ. A. No. 79-1668.

United States District Court, District of Columbia.

May 30, 1980.

James F. Davis, Alan M. Grimaldi, Howrey & Simon, Washington, D. C., for plaintiffs.

Vito J. DiPietro, Dept. of Justice, Peter E. Derry, William P. Dale, Washington, D. C., for defendants.

MEMORANDUM

JOHN LEWIS SMITH, Jr., District Judge.

Plaintiffs, Mead Corporation and Mead Digital Systems, Inc. (Mead), bring this action against the United States, the Secretary of Defense, and the A.B. Dick Company (A.B. Dick) for determination of ownership of United States Patent No. 3,596,275, issued to Richard G. Sweet, the named inventor. Jurisdiction is premised upon 28 U.S.C. §§ 1331 (federal question), 1338 (patents), 1361 (mandamus), 2201 (declaratory judgment), 2202 (other relief), 2410 (actions affecting property on which the United States has a lien), 35 U.S.C. § 261 (ownership, assignment of patents), 40 U.S.C. § 471 (Federal Property and Administrative Services Act), and 5 U.S.C. §§ 701-706 (Administrative Procedure Act). The matter is presently before the Court on A.B. Dick's motion to dismiss, federal defendants' motion to dismiss or in the alternative, for summary judgment, and plaintiffs' motion for summary judgment.

Mr. Sweet has long been associated with Leland Stanford Junior University as a research associate. He was with the University in the early 1960s, when Stanford entered into a contract with the Army Signal Corps, Contract No. DA-36-039-SC-87300, to conduct research in electronic counter-measures. In the course of that research, Mr. Sweet developed the invention at issue, an ink-jet printing device. The contract, when entered into, contained a PATENTS RIGHTS (LICENSE) (JAN. 1961) clause, Armed Services Procurement Regulations (ASPR) § 9 107.2(b), which determined patent rights over inventions made under the contract. This provision was later amended to contain an updated version of the same clause. ASPR § 9-107.2(b) (APR. 1962). When Mr. Sweet completed work on the invention in 1963, Stanford's patent policy allowed a research associate to keep all rights to his invention unless otherwise required by contracts and grants for sponsored research and subject to any contract obligations owed a research sponsor. Mr. Sweet advised Stanford orally and in writing that he would file a patent application covering his invention. In 1963, Mr. Sweet entered into a license agreement with Minneapolis-Honeywell Regulator Company, which in turn filed the patent application on the Sweet invention naming Mr. Sweet as owner. In 1964 and 1965, licenses were conveyed to the government, pursuant to the requirements of ASPR § 9-107.2(b). Stanford neither claimed title to the patented invention nor did it compel Mr. Sweet to assign his rights to Stanford. The University advised Honeywell that Mr. Sweet held title to the invention, subject to the non-exclusive license held by the United States. In 1971, the Sweet patent issued, and in September of 1972, Mr. Sweet conveyed his interest in the patent to the A.B. Dick Company, along with his interest in the corresponding foreign patents and the invention claimed under those patents. Plaintiffs are in the business of manufacturing high speed ink-jet printers, and A.B. Dick has sued Mead in a case transferred to the Southern District of Ohio, C.A. No. C-3-79-177, for infringement of the patent it obtained from Mr. Sweet.

Mead brings this suit (1) to obtain a declaration that all right, title, and interest in the Sweet invention is vested in the United States, or if not vested, that it should be assigned to the United States by A.B. Dick, (2) to compel the Secretary of Defense to recognize that title to the patent is vested in the United States and therefore under the custody of the Defense Department, (3) to compel the Secretary either to publish the patent or dedicate it to the public, and (4) to obtain a declaration that A.B. Dick has no ownership in the Sweet patent, and should deliver the letters patent to the Defense Department, and dismiss all infringement charges brought against Mead.

Plaintiffs do not dispute the fact that section 1331 does not in itself create substantive rights or causes of action, Phillips Petroleum Co. v. Texaco, Inc., 415 U.S. 125, 129, 94 S.Ct. 1002, 1004, 39 L.Ed.2d 209 (1974), but only confers jurisdiction on the district courts to hear certain cases that are supported by an independently created substantive cause of action. The same proposition applies to sections 1338 (patents), 1361 (mandamus), 2201 (declaratory judgment), and 2201 (other relief). Section 2410 grants courts jurisdiction over cases involving property on which the United States has or claims "a mortgage or other lien." The complaint in this case states that the United States' alleged interest in the Sweet patent is a title interest, not a mortgage or other lien. Section 2410 is therefore inapplicable to the present action. Bertie's Apple Valley Farms v. United States, 476 F.2d 291, 292 (9th Cir. 1973).

Plaintiffs contend that their substantive cause of action is conferred by the APA grant of review of agency action, 5 U.S.C. § 702. This section also waives any claim the United States might have to sovereign immunity. Nuclear Data, Inc. v. Atomic Energy Commission, 344 F.Supp. 719, 721 (N.D.Ill.1972). The duties plaintiffs allege have not been performed are those owing under 40...