Robinson v. United States, 302

• Decision Date: 12 July 1956
• Docket Number: Docket 23686.,No. 302,302
• Citation: 236 F.2d 24
• Parties: Marion B. ROBINSON, Plaintiff-Appellant, v. UNITED STATES of America, Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

236 F.2d 24 (1956)

Marion B. ROBINSON, Plaintiff-Appellant, v. UNITED STATES of America, Defendant-Appellee.

No. 302, Docket 23686.

United States Court of Appeals Second Circuit.

Argued April 9, 1956.

Decided July 12, 1956.

Timen & Waters, New York City (Otis Mark Waters, W. Philip Van Kirk, New York City, of counsel on the brief), for plaintiff-appellant.

Leonard P. Moore, U. S. Atty., E. D. New York, Brooklyn, N. Y. (Lloyd H. Baker, Samuel V. Greenberg, Robert J. Lederman, Asst. U. S. Attys., E. D. New York, Brooklyn, N. Y., of counsel on the brief), for defendant-appellee.

Before CLARK, Chief Judge, and HINCKS and LUMBARD, Circuit Judges.

LUMBARD, Circuit Judge.

The question for decision is whether a claimant whose invention was used by the Government during a period when issuance of the patent was delayed under an order of secrecy may sue in the District Court under 35 U.S.C.A. § 183 for such use and for damages resulting from the secrecy order even though the Navy Department denied in toto the claim for compensation. Judge Byers dismissed the complaint for lack of jurisdiction. We hold that suit was properly brought in the District Court and accordingly reverse.

The plaintiff alleged in his amended complaint the following facts: His patent application No. 418497 was allowed for issuance of letters patent by Notice of Allowance dated October 21, 1949. Thereafter this application, together with all plaintiff's applications having common subject matter, was placed under a Secrecy Order dated June 21, 1950 and his patent was withheld under that order.¹

The complaint alleged further that the plaintiff applied to the Secretary of War, the Secretary of the Navy, and the Secretary of Defense for compensation for the damage caused by the secrecy order and for the use of his inventions by the Government. It alleged finally that the Department of the Navy, Office of Naval Research "failed to settle the claim of plaintiff for compensation."

The answer admits that the plaintiff filed certain patent applications and that they were subjected to secrecy orders; it also admits that on or about April 1, 1952 the Department of the Navy, Office of Naval Research "denied plaintiff's claim for compensation." The answer denied further that there had been any use of plaintiff's inventions by the United States and alleged the invalidity of the patents.

The plaintiff brought this action under 35 U.S.C.A. § 183.² The Government contends that under that section it is a prerequisite to jurisdiction in the District Court that the head of a department or agency has made an award to the claimant in some amount. This argument is based on that portion of § 183 which reads:

"A claimant may bring suit against the United States in the Court of Claims or in the District Court of the United States for the district in which such claimant is a resident for an amount which when added to the award shall constitute just compensation for the damage and/or use of the invention by the Government." (Emphasis supplied.)

Judge Byers dismissed the complaint on the basis of this argument. In a similar case brought in the Southern District of New York, Judge Dawson denied the Government's motion to dismiss the complaint even though the appropriate government department had taken no action on an application for an award of damages. Judge Dawson pointed out that a contrary holding would deny the claimant his day in court. Farrand Optical Co. v. United States, D.C.1955, 133 F.Supp. 555.

Section 183 of Title 35 was enacted on July 19, 1952 as a part of the general revision of that title. 66 Stat. 806. It was derived substantially unchanged from former § 153 which was enacted on February 1, 1952. 66 Stat. 4. Prior to February 1, 1952 the applicable provision was 35 U.S.C.A. § 42 which derived from an act of October 6, 1917, 40 Stat. 394, 65th Cong., 1st Sess. as amended by 54 Stat. 710, 76th Cong. 3rd Sess. 1940. 35 U.S.C.A. § 42 provided only for suit in the Court of Claims and read in pertinent part as follows:

"When an applicant whose patent is withheld as herein provided and who faithfully obeys the order of the Commissioner of Patents above referred to shall tender his invention to the Government of the United States for its use, he shall, if and when he ultimately receives a patent, have the right to sue for compensation in the Court of Claims, such right to compensation to begin from the date of the use of the invention by the Government: Provided, That the Secretary of War or the Secretary of the Navy or the chief officer of any established defense agency of the United States, as the case may be, is authorized to enter into an agreement with the said applicant in full settlement and compromise for the damage accruing to him by reason of the order of secrecy, and for the use of the invention by the Government."

The secrecy order in the instant case was issued on June 21, 1950 and rescinded on July 25, 1950. Thus it was issued under the old § 42 rather than under the 1952 law. The Act of February 1, 1952, however, in providing for the repeal of the older provision specified that

"such repeal shall not affect any rights or liabilities existing on the date of approval of this Act. * * * A claim arising under the repealed Acts and unsettled as of the defective date of this Act, may be presented and determined pursuant to the provisions of this Act."

Thus a person injured by an order issued under the old Act is entitled to the full benefit of the remedial procedures of the currently applicable provision. We turn then to the question of what are the prerequisites to jurisdiction in the District Courts under 35 U.S. C.A. § 183.

This section appears to set up alternative procedures by which a claimant may secure compensation for injury resulting from a secrecy order. One procedure is to wait until the issuance of a patent and then sue in the Court of Claims. This remedy is, however, limited to those claimants "who did not apply for compensation" to the head of the appropriate department or agency. The other procedure is to apply to the department or agency; and if an agreeable settlement is not arrived at, to sue in the District Court or the Court of Claims "for an amount which when added to the award shall constitute just compensation". The Government contends that there is a gap in these procedures and that a person who applies to the department or agency and is awarded nothing may not sue under § 183 either in the Court of Claims or in the District Court. It would indeed be anomalous if in such a situation a claimant had no judicial remedy. The Government argues, however, that such a claimant may nevertheless sue in the Court of Claims under 28 U.S.C.A. § 1498 and that this is the proper remedy for the claimant in the instant case.

With this contention of the Government we are unable to agree. First of all, there is considerable doubt that the plaintiff has any remedy under § 1498. That section provides a remedy for the recovery of compensation for use by the United States of an invention "described in and covered by a patent". Thus it has been held that a patentee may not recover under that section for use by the Government prior to the issuance of a patent. Gearon v. United States, Ct.Cl. 1953, 115 F.Supp. 910 certiorari denied 1955, 348 U.S. 942, 75 S.Ct. 364, 99 L. Ed. 737. The remedy of § 183, on the other hand, provides compensation for use by the Government in a period during which a patent has been withheld because of a secrecy order. For this period a patentee could not recover under § 1498. Moreover, § 183 provides not only for the recovery of compensation for the Government's use of an invention, but also for "the damage caused by the order of secrecy". There is no other statutory provision which gives a remedy for the recovery of such damages. If a patentee cannot sue under § 183 he is without a remedy to redress these injuries.

Section 183 apparently sets out a comprehensive scheme for providing compensation in all cases where secrecy orders are issued. There is no indication that Congress intended that this scheme should be supplemented by any other statutory provision such as § 1498. There is certainly no indication in the statutory language that Congress intended that some persons should be deprived of a judicial remedy if they should first seek compensation from the appropriate executive agency. The remedy which may be pursued only in the Court of Claims...