Zimmerman v. United States Government, 18002.

• Decision Date: 19 February 1970
• Docket Number: No. 18002.,18002.
• Citation: Zimmerman v. United States Government, 422 F.2d 326 (3rd Cir. 1970)
• Parties: Theodore ZIMMERMAN, Appellant, v. The UNITED STATES GOVERNMENT, United States Department of Commerce, Patent Office, Washington, D. C.; Edwin L. Reynolds, First Assistant Commissioner; Mr. L. H. Baer, United States Civil Service Commission Regional Director; Picatinny Arsenal; Isadore G. Nadel; Sidney Bernstein; and Joseph Fillipone.
• Court: U.S. Court of Appeals — Third Circuit

422 F.2d 326 (1970)

Theodore ZIMMERMAN, Appellant, v. The UNITED STATES GOVERNMENT, United States Department of Commerce, Patent Office, Washington, D. C.; Edwin L. Reynolds, First Assistant Commissioner; Mr. L. H. Baer, United States Civil Service Commission Regional Director; Picatinny Arsenal; Isadore G. Nadel; Sidney Bernstein; and Joseph Fillipone.

No. 18002.

United States Court of Appeals, Third Circuit.

Argued January 8, 1970.

Decided February 19, 1970.

Theodore Zimmerman, pro se.

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 OF THE COURT

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 "demanding 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). 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 establishes the sole avenue for relief. Stelma, Inc. v. Bridge Electronics Co., 300 F.2d 761 (3 Cir.1962); Identification Devices, Inc. v. United States, 74 App. D.C. 26, 121 F.2d 895 (1941); John J. McMullen Assoc. v. State Board of Higher Educ., 268 F.Supp. 735 (D.Ore. 1967); Dearborn Chemical Co. v. Arvey Corp., 114 F.Supp. 369 (N.D.Ill.1953). In Indentification Devices, supra, 121 F.2d at 896, Mr. Justice Rutledge, sitting as a circuit judge, held:

The suit is for unlicensed use of a patent. It is against the United States. Its consent to be sued is essential to jurisdiction. The statute 28 U.S.C. § 1498 has given consent to suit in the Court of Claims. It is "for the recovery of his reasonable and entire compensation for such use * * *." (Italics supplied.) This clearly shows that the remedy is exclusive. Consequently the District Court was without jurisdiction.

* * * * * *

Nor does it matter that the present suit seeks injunctive relief. Crozier v. Fried. Krupp Aktiengesellschaft, 224 U.S. 290, 32 S.Ct. 488, 56 L.Ed. 771 (1912), clearly rules this point, and also holds that suit in the Court of Claims affords an adequate remedy for ascertaining and giving compensation for the property taken by the Government.

(Emphasis supplied.)

We conclude that except for the section 1498 action to which the government has consented, the doctrine of sovereign immunity applies with full force.

Appellant contends, however, that sovereign immunity is no bar to his action for the reasons that: (1) the individual defendants can be held personally liable; (2) absent a judicial determination that the government is entitled to a license in the invention, "the government would not be giving up money or anything else with a money value from the public treasury or domain. The United States * * * is being asked to cease and desist from seizing patent rights which do not belong to the Government." (3) the finality provision of Executive Order 10096(4) (d) authorizes the "taking of property * * * in violation of due process guaranteed under the Fifth and Fourteenth Amendments" and is void for vagueness.⁶

The short answer to appellant's first contention is simply that he is not seeking to hold the individually named defendants personally liable for their actions. He is not asking that they respond in damages, see Larson v. Domestic & Foreign Corp., 337 U.S. 682, 688, 69 S.Ct. 1457, 93 L.Ed. 1628 (1949), and his own pleadings conclusively reveal that the request for equitable relief is directed against the government. The essential nature and effect of this suit would not be altered even if it is true that the individual defendants could be held personally accountable to appellant.

In Dugan v. Rank, 372 U.S. 609, 620, 83 S.Ct. 999, 1006, 10 L.Ed.2d 15 (1963), the Supreme Court set forth the general rule that an action is against the sovereign if "`the judgment sought would expend itself on the public treasury or domain, or interfere with the public administration,' Land v. Dollar, 330 U.S. 731, 738 67 S.Ct. 1009, 1012, 91 L.Ed. 1209 (1947), or if the effect of the judgment would be `to restrain the government from acting, or to compel it to act.' Larson v. Domestic & Foreign Corp., supra, at 704 69 S.Ct. at 1468, 93 L.Ed. 1628." Exceptions to this rule would involve "(1) action by officers beyond their statutory powers and (2) even though within the scope of their authority, the powers themselves or the manner in which they are exercised are constitutionally void. Malone v. Bowdoin 369 U.S. 643, at 647, 82 S.Ct. 980, at 983, 8 L.Ed.2d 168 (1962)." Id. at 621-622, 83 S.Ct. at 1007.

Appellant's statement that the government "would not be giving up money * * * from the public treasury or domain," Land v. Dollar, supra, is specious in light of his continued insistence that his suit is for equitable relief rather than money damages. His acknowledgment that the "United States * * * is being asked to cease and desist" is, however, pertinent, for, to be sure, the effect of a declaratory judgment and injunction in appellant's favor would be to "restrain the government from acting." Larson v. Domestic & Foreign Corp., supra. And appellant's whimsical, albeit sincere, assertion that the government is not entitled to any interest in the invention is the precise substantive issue that would be resolved by a timely action in the Court of...