author: PHILLIPS, Chief Judge.

text:
    ATLAS CHEMICAL INDUSTRIES, INC., Plaintiff-Appellant, Cross-Appellee, v. MORAINE PRODUCTS, Defendant-Appellee, Cross-Appellant.
    Nos. 74-1141, 74-1142.
    United States Court of Appeals, Sixth Circuit.
    Dec. 12, 1974.

      Gilbert Gove, Miller, Canfield, Paddock & Stone, Detroit, Mich., Arthur G. Connolly, William J. Wier, Jr., Connolly, Bove & Lodge, James M. Mulligan, Jr., Wilmington, Del., for plaintiff-appellant.
    Richard D. Grauer, Bernard Cantor, Cullen, Settle, Sloman & Cantor, Detroit, Mich., Alvin D. Shulman, Allen H. Ger-stein, Merriam, Marshall, Shapiro & Klose, Chicago, 111., for defendant-appellee.
    Before PHILLIPS, Chief Judge, EN-GEL, Circuit Judge, and McALLISTER, Senior Circuit Judge.
   PHILLIPS, Chief Judge.

This is an appeal from summary judgment in a patent suit filed by a licensee (Atlas) against the licensor (Moraine), in which the District Court declared the licensor’s patent No. 3,422,189 to be invalid. The District Court ordered that royalties which had been escrowed during the period in which the action was pending be paid over to the licensor, and assessed certain pre-litigation costs against the licensee. Reference is made to the decision of the District Court, reported at 350 F.Supp. 353 (E.D.Mich.1972) for a discussion of the complex details of the prosecution of the patent application before the Patent Office, and for the details of the series of license agreements which were negotiated both before and after the issuance of the patent. We affirm the finding of invalidity, and reverse as to the escrowed royalties and pre-litigation costs.

This suit began as an action by Atlas Chemical Industries, Inc. (Atlas), a licensee, to declare invalid a patent held by its licensor, Moraine Products (Moraine). The action was initiated on authority of Lear v. Adkins, 395 U.S. 653, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969). The invention described in the licensed patent concerns the use in humans of a drug formula comprising a mixture of organo-polysiloxane and finely divided silica, marketed by Dow Corning Corporation as Antifoam A. This composition, also known commercially as “simethicone,” originally was used to treat cattle bloat. Dr. Joseph H. Rider, the patentee who assigned his patent to Moraine, discovered that this composition also could be used to alleviate flatulence or gas in the gastrointestinal tract of humans.

When Atlas originally sued to invalidate the patent it offered in its complaint to pay royalties into escrow during the pendency of the suit. The District Court so ordered. A total of $291,-808 in royalties was paid in escrow.

Following extensive discovery by both parties, Atlas moved for summary judgment of invalidity on the basis that there was no genuine issue of material fact and that the patent was invalid because of a prior use. 35 U.S.C. § 102(b). Moraine filed a cross motion for dismissal of the complaint on account of the alleged “unclean hands” of Atlas. Moraine claimed that Atlas had known of the prior use which invalidated the patent, and had withheld that information from Moraine and from the Patent Office during the pendency of the patent application.

The District Court found that there was no material dispute of fact as to the prior use and granted summary judgment in favor of Atlas on the issue of validity. Moraine’s cross motion was denied on the theory that the public interest precluded a dismissal, since to hold otherwise would be to validate an invalid patent by estoppel or misconduct. 350 F.Supp. at 356.

The District Court was convinced that the “unclean hands” defense raised by Moraine had its application in other areas. It was held that, even though no counterclaim had been filed, “[cjertainly Moraine should be made as whole as possible. Atlas should be required to pay damages to Moraine.” Id. at 359. Certain costs and expenses which were incurred in procuring and defending the patent were assessed against Atlas in the sum of $139,495.40. The escrowed royalty payments, totaling $291,808, were also ordered paid over to Moraine.

I.

The first issue concerns the disposition of the case by summary judgment. We recently have treated summary judgment in patent cases in detail and have stated that this procedure “may be a useful tool in cases where the validity of a patent is involved” but that it “should be used sparingly.” Tee-Pak, Inc. v. St. Regis Paper Co., 491 F.2d 1193, 1195— 1196 (6th Cir. 1974).

In Tee-Pak we made the following comment concerning the statutory presumption of validity:

“An additional consideration that is present in patent cases is the statutory presumption of validity. A patent is presumed valid and the burden of proving its invalidity rests squarely on the party challenging it. 35 U.S.C. § 282. Even though this presumption may be weakened by the failure of the Patent Office to consider all pertinent art, the degree by which it is weakened depends on a balancing of the pertinence of the newly cited art with the pertinence of the art considered by the Patent Office. Thus, unless the presumption has been destroyed, it is a relevant factor for the court to consider in ruling on a motion for summary judgment.” 491 F.2d at 1196.

Since the ground of invalidity asserted in the present case does not touch on any area of inquiry considered previously by the Patent Office, there are no balancing factors here which weigh in favor of the presumption in disposing of the motion for summary judgment.

After reviewing the record in the present case, even with the abundance of caution which is required in relation to summary judgment, we agree with the District Court that there is “no genuine issue as to any material fact,” Rule 56, Fed.R.Civ.P., and that the patent is invalid for prior public use.

Under 35 U.S.C. § 102(b) a patent is invalid if “the invention was . in public use . . . more than one year prior to the date of the application for patent in the United States.” “Public use” is defined as “any non-secret use of a completed and operative invention in its natural and intended way.” FMC Corp. v. F. E. Myers & Bro. Co., 384 F.2d 4, 9 (6th Cir. 1967), cert. denied, 390 U.S. 988, 88 S.Ct. 1183, 19 L.Ed.2d 1291 (1968); see Dunlop Co., Ltd. v. Kelsey-Hayes Co., 484 F.2d 407 (6th Cir. 1973), cert. denied, 415 U.S. 917, 94 S.Ct. 1414, 39 L.Ed.2d 471 (1974); Minnesota Mining & Mfg. Co. v. Kent Indus., Inc., 409 F.2d 99, 100 (6th Cir. 1969).

The evidence in this case shows that the patent to the composition per se had been held by Dow Corning Corporation, but that its utility had been limited essentially to the treatment of cattle bloat. Dow Corning marketed this material under the name Antifoam A to Dr. Rider, one of the founders of Moraine and the patentee of the use of Antifoam A in humans. Prior to the time that Dr. Rider filed his application, and unknown to Dr. Rider, this same material was being sold to Leonard Bergstein, a pharmacist of Midland, Michigan. Since Dr. Rider’s application was filed on January 2, 1959, patent invalidity could be proved by a public use prior to January 2, 1958. Our examination of the record convinces us that the District Court was correct in concluding that:

“The record is without dispute that during the summer and fall of 1957 a druggist named Bergstein in Midland, Michigan, marketed Antifoam A prepared by the Dow Corning Corporation as a method of treating intestional gas in humans. It indicates without dispute that prescriptions for this product were filled, sold and the product was used by patients in Midland prior to January 2, 1958.” 350 F.Supp. at 355.

Moraine contends that Bergstein’s use of the product was experimental and, therefore, did not constitute a prior public use. See New Jersey Wood Paving Co. v. American Nicholson Pavement Co. (reported as Elizabeth v. Pavement Co.), 97 U.S. 126, 24 L.Ed. 1000 (1877).

In Dunlop Co. v. Kelsey-Hayes Co., supra, 484 F.2d at 413-414, this court held that in the face of a “prima facie demonstration of prior use, the inventor then has the burden of proving that this use ‘was not of a functionally operative device, or was substantially used for experimental or testing purposes.’ ”

This exception is to be guarded closely. “[T]he use of a single specimen, even in a factory and in the presence of a few employees, may be public.” A. Schrader’s Sons, Inc. v. Wein Sales Corp., 9 F.2d 306, 308 (2d Cir. 1925) (L. Hand, J.); see Consolidated Fruit Jar Co. v. Wright, 94 U.S. 92, 24 L.Ed. 98 (1876). Likewise, a single instance of placing the invention on sale is sufficient to invalidate the patent. Smith & Griggs Mfg. Co. v. Sprague, 123 U.S. 249, 258, 8 S.Ct. 122, 31 L.Ed.2d 141 (1887); Minnesota Mining & Mfg. Co. v. Kent Indus., Inc., supra, 409 F.2d at 100.

The District Court found that “[t)he product was prescribed by physicians, sold by Bergstein and used by patients to treat physical disorders,” and that “[t]he record ... is clear beyond any doubt that Bergstein’s use was not experimental.” This finding is supported fully by the record.

Since the record demonstrates that there was prior public use, and that the use was not privileged or “experimental,” we agree with the conclusion of the District Court that the patent is invalid under 35 U.S.C. § 102(b).

II.

Although the District Judge correctly decided the issue of the invalidity of the patent, he erred in directing that the accumulated royalties held in escrow be paid over to the licensor, Moraine. This arises from a misinterpretation of the decisions of this court in Troxel Manufacturing Co. v. Schwinn Bicycle Co., 465 F.2d 1253 (1972) (hereinafter referred to as Troxel I) and Troxel Manufacturing Co. v. Schwinn Bicycle Co., 489 F.2d 968 (1973), cert. denied, 416 U.S. 939, 94 S.Ct. 1942, 40 L.Ed.2d 290 (1974) (hereinafter referred to as Troxel II). The basic error of the District Court is reflected in this statement: “Troxel permits the licensor to keep the royalties when they have been paid during the course of litigation.” 350 F.Supp. at 359.

Troxel did not involve an action by a licensee attacking the validity of a patent owned by the licensor. It was not the type of suit authorized by Lear v. Adkins, 395 U.S. 653, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969).

The present suit is an action by a licensee, Atlas, attacking the validity of a patent owned by the licensor, Moraine. The instant case is the type of suit authorized by Lear v. Adkins.

In Lear the Court adopted an earlier dissenting view of Mr. Justice Frankfurter that the doctrine of licensee estoppel should be given “a decent public burial.” 395 U.S. at 667, 89 S.Ct. 1902. (Citation omitted.) The right of Atlas to bring this action as licensee to litigate the validity of the patent therefore is unquestioned. In Lear, as in the present case, the issue of the obligation to pay royalties also arose. In Lear there is an even stronger case for the continued payment of royalties to the licensor since an express contractual provision in the license agreement required that royalties must be paid up until the time the “patent ... is held invalid.” Id. at 673, 89 S.Ct. 1902. As in the present case, in Lear the licensee also derived some benefit from the pre-issue disclosure. The Court stated:

“[I]t may be suggested that although Lear must be allowed to raise the question of patent validity in the present lawsuit, it must also be required to comply with its contract and continue to pay royalties until its claim is finally vindicated in the courts.” Id. at 673, 89 S.Ct. at 1912.

The Court then focused on

“[t]he decisive question [of] whether overriding federal policies would be significantly frustrated if licensees could be required to continue to pay royalties during the time they are challenging patent validity in the courts.” Id.

The Supreme Court then concluded that “such a requirement would be inconsistent with the aims of federal patent policy.” Id. After an exhaustive discussion of these policy reasons, see id. at 673-674, 89 S.Ct. 1902, the Court expressly held “that Lear must be permitted to avoid the payment of all royalties accruing after Adkins’ 1960 patent issued if Lear can prove invalidity.” Id. at 674, 89 S.Ct. at 1913.

Our prior decisions are in harmony with these principles. In Troxel I we stated that a “licensee may at any time cease royalty payments, secure in the knowledge that the invalidity of the patent may be urged when the licensor sues for unpaid royalties.” 465 F.2d at 1260. This court, speaking through Judge Kent, further interpreted the holding in Lear to mean:

“that a licensee should not be required to pay royalties while challenging the validity of the patent [and] concluded that requiring such payment would undermine the federal policy favoring full and free use of ideas in the public domain.” Kewanee Oil Co. v. Bicron Corp., 478 F.2d 1074, 1085 (6th Cir. 1973), rev’d on other grounds, 416 U.S. 470, 94 S.Ct. 1879, 40 L.Ed. 315 (1974).

It is urged that the foregoing analysis conflicts with our decisions in the two Troxel cases. To the contrary, those cases have an independent basis, recognized by Lear, and implement some of the underlying policies which require our decision in the present case. In the Troxel cases the licensee was doing nothing to contest the validity of the patent. The licensee continued to enjoy the fruits of the license. Only because of Blonder-Tongue Laboratories, Inc. v. University of Ill. Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971), did the licensee become an incidental beneficiary to the invalidity established in the litigation initiated and prosecuted by another party in another circuit. Lear explicitly recognized the law of this Circuit that “[i]t is generally the rule that licensees may avoid further royalty payments, regardless of the provisions of their contract, once a third party proves that the patent is invalid. See, e. g., Drackett Chemical Co. v. Chamberlain Co., 63 F.2d 853 (1933),” 395 U.S. at 667, 89 S.Ct. at 1909.

In Troxel I we stated that “the rationale of Draekett remains the law of this Circuit except insofar as it expresses the licensee estoppel doctrine.” 465 F.2d at 1259. It is apparent that Draekett’s facts limit its application to the instances where the invalidity of the patent is challenged and proved by a third party. Further, we made it clear in Troxel I that there were differences in the equities of the situation if either the licensee himself was attacking the validity, or the licensee was seeking the refund of royalties actually paid to the licensor. One of the primary goals in Lear was to “unmuzzle” licensees so that an early adjudication of invalidity could inure to the public interest. We rejected the contention that the licensee should recover the total royalties paid prior to the adjudication of invalidity of the patent because this would give the licensee the legal equivalent of a “heads-I-win, tails-you-lose” advantage in a license agreement. Expeditious evaluation of the patent would be defeated:

“If the licensee could recover royalties paid (subject to any statute of limitations) on the basis of an adjudication of invalidity accomplished by another litigant, without incurring the expense or trouble of litigation, there would be less inducement for him to challenge the patent and thus remove an invalid patent from the competitive scene. He would be more likely to wait for somebody else to battle the issue because he would have nothing to lose by the delay.
“Rather than stimulating early litigation to test patent validity, such an interpretation of Lear would make it advantageous for a licensee to postpone litigation, enjoy the fruits of his licensing agreement, and sue for repayment of royalties near the end of the term of the patent. When a licensed patent is about to expire and the threat of injunction no longer exists, a licensee would have little to lose in bringing an action to recover all the money he has paid in royalties on the ground of the invalidity of the patent. The licensee would have a chance to regain all the royalties paid while never having been subjected to the risk of an injunction. Such an interpretation of Lear would defeat one of the expressed purposes of the court in announcing that decision.” 465 F.2d at 1257.

It is apparent that these equitable considerations commend an opposite result in the present case. The freedom from royalty payments, at as early a date as possible, is a strong “inducement ... to challenge the patent and thus remove an invalid patent from the competitive scene.” Id. Moreover, the licensee would not be “likely to wait for somebody else to battle the issue,” ■ id., if he were to lose his royalties while sitting on his rights in the hope for a valiant third party to pull the chestnuts out of the fire. The cases in the other Circuits which h.ave reached this issue are in agreement with our interpretation. The Second Circuit has stated:

“What Lear precisely held was that the courts may not enforce a royalty agreement with respect to an invention embodied in an American patent while the licensee was contesting its validity and could recover only when, as and if validity was established.” Painton & Co., Ltd. v. Bourns, Inc., 442 F.2d 216, 226 (1971).

The Supreme Court has quoted with approval the statement in Painton, id., that if an invalid patent issues: “many will prefer to pay a modest royalty than to contest it, even though Lear allows them to accept a license and pursue the contest without paying royalties while the fight goes on.” Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 488, 94 S.Ct. 1879, 1889 (1974). (Emphasis added.)

The payment of royalties in escrow does not change the result in this case. While an escrow is a commendable procedure to preserve the status quo during the course of litigation, the funds belong to neither party until the validity of the patent is determined.

The termination of the obligation to pay royalties in the Troxel cases is in part tied to the fact that “Troxel did not cease royalty payments prior to the Ninth Circuit’s holding of invalidity,” Troxel II, 489 F.2d at 973. The claim that a licensor could be compelled “to repay all royalties received from its licensees,” Troxel I, 465 F.2d at 1259 (emphasis added), was soundly rejected.

, We reverse that part of the judgment of the District Court ordering payment to Moraine of escrowed royalties.

III.

The District Court awarded Moraine $139,495.40 in summary judgment for costs and expenses incurred in prosecuting the patent, and “in defending the patent against alleged infringers.” 350 F.Supp. at 359. Costs and attorneys fees involved in the present action were not included. The theory on which this award was made was that Atlas had been guilty of unconscionable conduct when it did not disclose what it knew of the prior use during the prosecution of the patent.

It is unnecessary for us to inquire as to either the substance of these allegations, or whether if correct they could form the basis for relief. The award must fail because this issue was not properly before the court by appropriate pleadings.

Rule 56, Fed.R.Civ.P., permits summary judgment for a “party seeking to recover upon a claim, counterclaim, or cross-claim.” A defending party may also move for summary judgment, but only as to a claim, counterclaim or cross-claim that has been asserted against him. Rule 56(b). In order to receive affirmative relief the party must become a claimant and assert the proper pleading. Rule 12(b) relaxes the formal requirements of pleading and allows certain defenses to be made by motions at the option of the pleader. However, none of these exceptions, nor those embodied in other rules, encompass affirmative relief of the type awarded in the present action. In the present case Moraine did not file a counterclaim, see Fed.R.Civ.P. 13. Atlas, therefore, was deprived of notice as to the nature of the claim or the relief that might be due. Fed.R.Civ.P. 8.

Professor Moore states the fundamental rule as follows:

“[T]he function of pleadings under the Federal Rules is to give fair notice of the claim asserted so as to enable the adverse party to answer and prepare for trial, to allow for the application of the doctrine of res judicata, and to show the type of case brought, . so that it may be assigned to the proper form of trial. 2A Moore’s Federal Practice If 8.13 at 1695. (Footnote omitted.)

It is elementary that proper pleadings are a prerequisite to recovery. New & Used Auto Sales, Inc. v. Hansen, 245 F.2d 951 (9th Cir. 1957); See Armstrong Cork Co. v. Lyons, 366 F.2d 206 (8th Cir. 1966).

Since these damages were never pleaded they cannot be recovered.

Moraine relies upon the decision of this court announced by Judge McAllister, in Jack Mann Chevrolet Co. v. Associates Inv. Co., 125 F.2d 778 (6th Cir. 1942). In the absence of adequate pleadings we cannot reach this issue.

We reverse that part of the judgment of the District Court which awards $139,495.40 to Moraine for costs and expenses.

IY.

Atlas contended that the Moraine patent was procured fraudulently, and that Moraine, therefore, was liable for attorneys fees, 35 U.S.C. § 285, see Deyerle v. Wright Mfg. Co., 496 F.2d 45 (6th Cir. 1974), or a refund of paid-in royalties, see Troxel I, 465 F.2d at 1259 n. 5. Although a patent applicant is held to “the highest degree of candor and good faith,” Kingsland v. Dorsey, 338 U.S. 318, 319, 70 S.Ct. 123, 124, 94 L.Ed.2d 123 (1949), when dealing with the Patent Office, we are in agreement with the action of the District Court in ruling against Atlas on this issue.

The judgment of the District Court is affirmed as to the invalidity of the patent and reversed on the issues of the escrowed royalties and the pre-litigation costs and expenses.

Costs are taxed against Moraine Products.

      . It, therefore, is unnecessary to decide if experimental use by a person other than the inventor or someone within the inventor’s control, is an exception to the bar against prior use. Compare Dunlop Co., Ltd. v. Kelsey-Hayes Co., 484 F.2d at 413-414 with Magnetics, Inc. v. Arnold Engineering Co., 438 F.2d 72, 74 (7th Cir. 1971).

      . See also Congoleum Indus., Inc. v. Armstrong Cork Co., 366 F.Supp. 220, 233 (E.D. Pa. 1973); Horwitt v. Movado Watch Agency, Inc., 364 F.Supp. 687, 689 (S.D.N.Y.1973); see
        generally Ransburg Electro-Coating Corp. v. Spiller & Spiller, Inc., 489 F.2d 974, 976-977 (7th Cir. 1973); but see Kraly v. National Distillers and Chem. Corp., 502 F.2d 1366 (7th Cir. 1974).

      . Troxel I and Troxel II announce and apply precisely the same rule with respect to the cut off date for liability for royalties where the licensee did not sue to challenge the validity but continued to pay royalties until invalidity was declared in other litigation challenging the validity of the patent. In that situation liability of the licensee for royalties ceases on the date of eviction of the patent, that is, the date as of which the patent is determined to be invalid. This is the holding in both cases. Troxel I, 465 F.2d at 1259-1260; Troxel II, 489 F.2d at 973.


source: Caselaw Access Project

author: GOLDBERG, Circuit Judge:

license: Public Domain

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Flores AMAYA, Defendant-Appellant.
    No. 74-2311.
    United States Court of Appeals, Fifth Circuit.
    Feb. 27, 1975.
    Peter Torres, Jr., Warren Weir, San Antonio, Tex., for defendant-appellant.
    William S. Sessions, U. S. Atty., Eb Luckel, John M. Pinckney, II, Asst. U. S. Attys., San Antonio, Tex., for plaintiffappellee.

      Before THORNBERRY, GOLDBERG and GODBOLD, Circuit Judges.
   GOLDBERG, Circuit Judge:

Defendant Flores Amaya was indicted and tried for conspiring to distribute a quantity of heroin in violation of 21 U.S.C. § 841(a)(1). The trial lasted two days. The jury deliberated for about a half hour at the close of the second day and was then recessed by the judge. At about 9:00 a. m. on the third day the jury reconvened. At about 1:25 p. m. on that day the jury passed a note to the judge which, while unavailable to us, evidently indicated that the jury was deadlocked. In response, the judge sent a letter which read: “Please continue to review the evidence again, try to reach a verdict and report back to me in one hour.” The jury wrote back to the judge to explain that it had deliberated “for a few minutes” but decided it could not reach a verdict within the hour. At 2:25 p. m. the judge delivered an Allen charge as reproduced below. The charge is substantially like that given in United States v. Fonseca, 5 Cir. 1974, 490 F.2d 464, save for the following accompanying comment:

you have deliberated from 9:15 today and you deliberated for about 30 minutes yesterday, but we had one jury deliberate under circumstances such as you have expressed here to me for over nine days and they finally reached a verdict. So I’m going to give you an opportunity to reach a verdict

The judge then dismissed the jury for the day. They reconvened at 9:15 the next morning and sometime between then and 10:40 a. m. they found the defendant-appellant guilty.

On appeal, Amaya contends that the instructions which the judge gave to the jury had the cumulative effect of coercing a verdict. If such was the case, then the instruction was incorrectly given and a mistrial must be declared. Jenkins v. United States, 1965, 380 U.S. 445, 85 S.Ct. 1059, 13 L.Ed.2d 957; Powell v. United States, 5 Cir. 1961, 297 F.2d 318. The basis of appellant’s attack on the charge lies in the verbiage used.

I.

The first specification of error lies in the trial judge’s comment that he wanted the jury to report back to him within an hour as to whether they were able to reach a verdict. Other Circuits have held that the trial judge may not put the jury under any conscious, explicit time demands. United States v. Lansdown, 4 Cir. 1972, 460 F.2d 164, 169 n. 3; Goff v. United States, 10 Cir. 1971, 446 F.2d 623; Burroughs v. United States, 10 Cir. 1966, 365 F.2d 431.

In Burroughs the jury took the case at 5 p. m. and were asked by the judge to “see if you can’t reach a verdict within an hour.” An hour and twenty minutes later the jury came back to the courtroom to inform the judge that they were deadlocked. The judge then gave an Allen charge and asked them to go back and work until 7 p. m.: if they could not reach a verdict by then they would be recessed and would go back to their deliberations in the morning. The jury appears to have reached a verdict that evening. The Tenth Circuit reversed and noted:

But, in any event, it is one thing to recall the jury to beseech them to reason together, and it is quite another to entreat them to strive toward a verdict by a certain time. When these admonitions are considered in their context, they are subject to the clear inference that the judge was unduly anxious to conclude the lawsuit, and we think it entirely reasonable to infer that the jury was aware of his anxiety. This type of verdict-urging on the part of the court tends to undermine the proper function of the common law jury system as contemplated by the Seventh Amendment. We must guard against any such subtle inroads. We think the charge in this case went beyond the permissible limits of the Allen charge as it has been construed and approved by this court. 365 F.2d at 434.

Burroughs is a stronger case for reversal than the one before us. In the present case the time suggestion was not repeated again in conjunction with an Allen charge. Nevertheless, it is reasonable to infer that the jury in the instant case may have taken from the judge’s remark that he was anxious to conclude the lawsuit.

The second specification of error lies in the closing comment of the judge that one jury had taken nine days to reach a verdict; and therefore he would continue to give this jury “an opportunity” to reach a verdict.

In two cases this Circuit has considered the legitimacy of an instruction which intimated to the jury that the judge was prepared to allow their deliberations to continue for days. In Cook v. United States, 5 Cir. 1958, 254 F.2d 871, we reversed and remanded a case in which the trial judge had pressed the foreman to indicate the actual numerical division in the jury and had then said:

Now, you give the Marshal your name and your address and he will send and get your shirts and whatever underclothes you need and your razors, so you can make yourself comfortable. Now, I am not going off and leave you all. I am going home Friday afternoon. If you do not reach a verdict by that time you can call me on Saturday at Brunswick, if you reach a verdict on Saturday. I will be back here Sunday afternoon. I am not trying to threaten you. I am telling you exactly what the Court is going to do.

To which this Court responded:

The mere asking of the question as to the standing of the jury ... is error per se. In this case that error was aggravated by the suggestion that the jury might be held together through Thursday, Friday, Saturday and Sunday. . . . Within its perogative, the jury must remain as free from any possible influence or coercion, even though unintended, as the trial judge would require that he himself be when sitting as a trier of fact.

In Boyett v. United States, 5 Cir. 1931, 48 F.2d 482, the trial judge told a deadlocked jury that some of the jurors did not want instructions, and were unwilling to follow the instructions supplied by the Court. He then said, “It does not seem to the Court that there should be any great difficulty in arriving at a verdict in this case.” He added:

Mr. Marshal (addressing the Marshal of the Court): You can prepare supper for this jury and a place for them (to be made comfortable) for the night, and after supper you may permit them to consider their verdict until bedtime, and then permit them to retire until morning, and after they have had breakfast, return them to their jury room for further consideration of their verdict. Be sure and see that they are made comfortable. 48 F.2d at 483-484.
We observed:
[W]hen the jury came into court the second time the judge made it very clear to them that he believed some of them were derelict in their duty and that he intended to punish them by keeping them sequestered indefinitely until they reached a verdict. This tended to intimidate and coerce them. 48 F.2d at 484.

Both of these cases presented far stronger intimations of coercion than does the present case. In each the Court’s focus was upon the other element of coercion in the case — the demand for a numerical count or the castigation of jurors unwilling to follow instructions. But in each the Court indicated that it would be unwilling to tolerate coercion by the district court in the form of explicit mention of the possibility of prolonged deliberation.

The instruction in the present case can plausibly be read merely as an indication that the jury should take the time it needs. On this hypothesis, the mention of the nine days is only to quiet qualms that the jury may have that it should rush to a conclusion; for as of yet, it had not taken an exorbitant amount of time. Moreover, the sentence following the “nine days” comment suggests that the judge was merely giving the jury “an opportunity to reach a verdict” and was not demanding one from them. On the other hand, the mention of the nine days can also plausibly be read to suggest to the jury that it was “in for the duration.” Under this hypothesis, the judge was indicating that he would not easily let the jury out of coming to an agreement, and was prepared to have the jurors invest a great amount of time deliberation if some of the jury members chose to be stubborn. This inference of a desire for a verdict is strengthened by the fact that merely an hour before he had suggested to the jury that it try to reach a verdict and report back to him. It is, of course, possible that different jurors reacted in different ways to this charge. For some concern over their indecisiveness may have been quieted while others may have been further aroused by the bleak prospect promised by continued indecision.

This Court, then, is faced with deciding the legitimacy of trial instructions which indubitably go beyond the Allen charge approved in United States v. Bailey, 5 Cir. en banc 1973, 480 F.2d 518, affirming, United States v. Bailey, 1972, 468 F.2d 652 and United States v. Fonseca, 5 Cir. 1974, 490 F.2d 464, — but which exacerbate it in the following manner: (1) they include a single note to the jury suggesting the jury report back in an hour; while suggestive of a deadline, the note here was less coercive than were the instructions in previous “deadline instruction” cases; ■ (2) they include the “nine day” reference; this statement is ambiguous and might be read as either a threat to the jury or in mitigation of the jury’s pre-existing consciousness of the duration of its deliberations.

We find that the nuances hereabove mentioned are beyond the allowable perimeters of jury instruction.

II.

The Allen charge both deserves and receives a healthy disrespect in our courts. The original panel in United States v. Bailey, termed the charge “an abusable relic” which created a possibility of prejudice whenever given and subsequently served as “an overly fertile source of appeals.” 468 F.2d at 668, 669. Nevertheless, this Court approved the continued use of the standard Allen charge in United States v. Bailey, en banc: “We adhere to our decisions approving the Allen charge within the limitations therein delineated.” 480 F.2d at 518. All of the cases then cited by the Court involved that standard charge, either alone or with an additional, but clearly mitigating, instruction.

This is no accident, for this court has long recognized the susceptibility of the charge to coercion’s pointed finger, and we have therefore sought to limit it. In Green v. United States, 5 Cir. 1962, 309 F.2d 852 this Court said:

[A]n old decision of the Supreme Court has upheld the charge as a reminder to jurors that “they should listen, with a disposition to be convinced, to each other’s argument.” Allen v. United States, 1896, 164 U.S. 492, 17 S.Ct. 154, 41 L.Ed. 528. This is the outermost limit of its permissible use. There is no justification whatever for its coercive use.

309 F.2d at 854 (emphasis added). The Green opinion reflects our conclusion in Powell v. United States, 5 Cir. 1961, 297 F.2d 318 that:

It is implicit in the decisions of the Supreme Court dealing with the Allen case [citations omitted] that the Fourth Circuit was correct in its recent holding [in United States v. Rogers, 1961, 289 F.2d 433, 435-37] ‘that the Allen charge, itself, approaches ultimate permissible limits . ’ in handling situations similar to that facing the court below. 297 F.2d at 321 (emphasis added).

We are thus faced with a standard charge which itself approaches the border between instruction on jury responsibility and jury coercion, coupled with comments which may plausibly be read to increase the likelihood of intimidation. While we cannot gauge that effect with certainty we are reminded:

Moreover, ‘[S]uch departures impose on appellate courts the almost impossible task of weighing the prejudicial impact’ of variations in the approved charge. [Citation omitted]. The impact can never be assessed accurately, for the relevant events take place in the secrecy of the jury room, and never appear in the trial record. For us to become involved, at this point, in gauging the coerciveness of various Allen-type renditions would be to launch us on an unnecessary voyage in judicial review. United States v. Angiulo, 1 Cir. 1973, 485 F.2d 37 at 40.

Where a charge may be plausibly read as more coercive than the standard charge we must hold that the charge was incorrectly given. So much is implied in our decision in Thaggard v. United States, 5 Cir. 1965, 354 F.2d 735, where we said: “This court, although sometimes reluctantly, has approved the ‘Allen’ charge, while carefully assuring ourselves that there are not engrafted upon it any partial or one-sided comments.” 354 F.2d at 739 (emphasis added). In the first part, we are unwilling to risk even a small chance of increased — and therefore immediately illegitimate — jury coercion over that which inheres in the borderline Allen charge merely for the sake of instructional novelty. In the second part, to hold otherwise would turn this Court into a psychologists’ symposium with resultant great expenditures of energy and yet necessarily capricious solutions. Cf., United States v. Duke, 5 Cir. 1974, 492 F.2d 693 at 697.

Of course, additions to the standard instruction which clearly mitigate its coercive impact — by pointing to each jur- or’s duty to his own conscience, or the need for the majority to listen again to the minority as well as vice versa — may still be given. See, e. g., Posey v. United States, 5 Cir. 1969, 416 F.2d 545, 551-552; Sanders v. United States, 5 Cir. 1969, 415 F.2d 621, 631.

In Bailey, this Court indicated how far we will allow the Allen charge to go. We will sanction soothing and purgative additions, but any verbal gilding which may plausibly be read as coercive must be disapproved. We must remain ready to prevent a concentrated coercive charge from judicially catalyzing a surrender of beliefs. We must be as certain as physically possible that the conjunction of time and words is not coercive. In Bailey we approved a bare branch; we must always be ready to prune to insure that it does not fructify. The sanctity of jury deliberations cannot be sullied by a trial judge’s extra -Allen nudge.

Because we must reverse and remand this case on the basis of the instructions given, we pretermit discussion of the other errors alleged by the defendant-appellant.

Reversed and remanded.

      . Allen v. United States, 1896, 164 U.S. 492, 17 S.Ct. 154, 41 L.Ed. 528.

      . Now, I don’t want the record to reflect nor do I want anybody to know how you stand with reference to your deliberations in this case. Now you have asked for additional instructions and additional definitions which I have given you. And I know that you are trying very hard to discharge your responsibilities as jurors in a very conscientious manner. But as you know, this has been an expensive trial both from the standpoint of the Government and from the standpoint of you as taxpayers and as jurors, officers of this Court and as triers of the facts. And also it’s a trying experience for the parties.
      Now I stand ready at any time if you request it to charge you additionally as to the law or give you any other instructions that might be helpful to you. I have made the charge on the law in this case as simple as the applicable law would permit me to give it to you. I charge you additionally at this time that this is a most important case both from the standpoint of the Defendant and of the Government. But all trials are exceedingly expensive.
      Your failure to agree upon a verdict will necessitate another trial equally as expensive. This Court is of the opinion that this case cannot be again tried better or more exhaustively than it has been by either side in the case. It is therefore very desirable from the standpoint of all the parties and everyone interested in this case that you do reach a verdict. This Court does not desire that any juror should surrender his or her conscientious convictions. On the other hand, each juror shall perform his or her duty conscientiously and honestly according to the law in this case and according to the evidence in this case.
      Although the verdict to which a jury agrees must of course be his or her own verdict, the result of his or her own convictions and not a mere acquiescence to the conclusions of your fellow jurors, yet in order to bring 12 minds to a unanimous result, you jurors must examine the question submitted to you with candor and with proper regard and deference to the opinions of the other members of your jury. You should consider that this case must at some time be decided by somebody and by some jury in a position which you now find yourselves. You were selected in the same manner and from the same source from which any future jury must be selected. And there is no reason to suppose that this case will ever be submitted to a more intelligent or impartial or more competent jury to decide it or that clear evidence will be produced on one side or the other.
      In conferring together, you ought to pay proper respect to each other’s opinions with the disposition to be convinced by each other’s arguments. And on the other hand, if the larger number of your panel are for a conviction, a dissenting juror should consider whether a doubt in his or her own mind is a reasonable one which makes no impression upon the minds of so many equally honest, equally intelligent with that juror who has heard the same evidence and with the same attention and with the same equal desire to arrive at the truth on the matter and under the sanctity of the same oath.
      On the other hand, if a majority are for acquittal, the minority ought to seriously ask themselves whether they may not be reasonable and may not reasonably and ought not to doubt the correctness of a judgment which is not concurred in by most of those with whom they are associated on this jury and distrust the weight or sufficiency of the evidence which fails to carry a conviction in the minds of your fellow jurors.
      Now with this additional charge, and I cannot in view of the slight — I don’t consider your deliberations at all lengthy at this time. I think that there is a possibility that the jurors have and usually do if given an opportunity on sober reflection arrive at a verdict. So I’m going to excuse you for the day and ask you to come back in the morning. I’m going to give you an opportunity to — you have deliberated from 9:15 today and you deliberated for about 30 minutes yesterday. But we had one jury deliberate under circumstances such as you have expressed here to me for over nine days and they finally reached a verdict. So I’m going to give you an opportunity to reach a verdict. I’m going to ask you now — your deliberations are important. I want to give you an opportunity on sober reflection to return to your residences. Do not discuss this case with anybody, among yourselves, away from this Courtroom. Don’t discuss it with any member of your family. Do not read, by all means, anything about this case in the newspaper. You have my instructions on that. Follow the instructions I have given you. Do not listen to it on the radio or watch it on television. And I expect you to be back in the morning at 9:15 to do your best to resolve your differences. Re-examine the position that each of you have taken and commence your deliberations at 9:15.
      Mr. Gonzalez and Mr. Jacks will meet you here in the morning. Follow the instructions and you are excused until 9:15 in the morning.


author: PER CURIAM:

text:
    UNITED STATES of America, Appellee, v. Bruce Andrew BAECHLER, Appellant.
    No. 74-1597.
    United States Court of Appeals, Fourth Circuit.
    Argued Oct. 1, 1974.
    Decided Dec. 23, 1974.
    Rehearing and Rehearing In Banc Denied Feb. 5, 1975.
    Certiorari Denied May 27, 1975.
    See 95 S.Ct. 2000.

      Deborah G. Mailman, Raleigh, N. C. [Court-appointed], for appellant.
    Benjamin H. White, Jr., Asst. U. S. Atty. (N. Carlton Tilley, Jr., U. S. Atty., and Ronald V. Shearin, Asst; U. S. Atty., on brief), for appellee.
    Before BOREMAN and BRYAN, Senior Circuit Judges, and WARRINER, District Judge.
   PER CURIAM:

In his trial for failure to register on March 29, 1973, in North Carolina, as required by the Military Selective Service Act, 50 App. U.S.C. § 453, Bruce Andrew Baechler maintained that the statute was invalid under the due process doctrine of the Fifth Amendment and the religious freedom guaranty of the First Amendment.

The jury found him guilty on April 24, 1974, and he now appeals the District Court’s conviction. We affirm. He insisted that the Act denied him equal protection of the law, first, in requiring males to register but exempting females, and, secondly, in selecting him for prosecution while not embracing all other non-registrants. Further, he charged that it deprived him of First Amendment assurance of free exercise of religion in refusing to consider his claim for conscientious-objector classification until after he registered, since that procedure itself would compromise his religious faith.

Considering the nature of the demands of military service, we cannot say that Congress had no rational basis for the distinction based on sex. While it is true that women may and do perform vital services in the armed forces of the United States, and their physical and mental capabilities are valued contributions to the nation in both peace and war, these characteristics and accomplishments do not create a constitutional obligation upon the Government to subject them to call equally with men. Kahn v. Shevin, 416 U.S. 351, 94 S.Ct. 1734, 40 L.Ed.2d 189 (1974); United States v. Bertram, 477 F.2d 1329 (10 Cir. 1973). Disagreeing with appellant we observe nothing contra in Frontiero v. Richardson, 411 U.S. 677, 93 S.Ct. 1764, 36 L.Ed.2d 583 (1973).

Nor does the proof suggest that the appellant was singled out for prosecution. Undoubtedly there were many men who were obligated to register under the Act but did not do so. The reasons for overlooking the latter could have been lack of knowledge on the part of the Government of their delinquency, inability to locate them, or other understandable circumstances accounting for the absence of prosecution. At least, however, accusation of the appellant does not appear to have been a deliberately punitive determination. Oyler v. Boles, 368 U.S. 448, 82 S.Ct. 501, 7 L.Ed.2d 446 (1962); United States v. Berrigan, 482 F.2d 171, 174 (3 Cir. 1973). Certainly there was no such focus on the appellant’s dereliction to warrant such an evidentiary hearing on the point as the appellant sought; or was granted in United States v. Falk, 479 F.2d 616 (7 Cir. 1973); or was discussed in United States v. Crowthers, 456 F.2d 1074, 1078 (4 Cir. 1972).

With respect to his First Amendment defense, it seems that in answer to his request to claim exemption as a conscientious objector, he was advised that he would have to register first. This he declined to do, explaining that as a member of the Society of Friends (Quakers), registration was a war-like step which his religious beliefs forbade. In our judgment, insistence upon his registration as a prerequisite to a claim for such exemption was not an infringement upon his First Amendment rights of religious freedom. United States v. Bertram, supra, 477 F.2d 1329 (10 Cir. 1973); United States v. Bigman, 429 F.2d 13 (9 Cir. 1970), cert. denied, 400 U.S. 910, 91 S.Ct. 141, 27 L.Ed.2d 150; United States v. Crocker, 308 F.Supp. 998 (D.C.Minn. 1970), aff’d, 435 F.2d 601 (8 Cir. 1971).

Prefatory to the assertion of his three positions, the appellant Baechler moved under F.R.Crim.P. 16(b) and 17(b) first for discovery of, and subpoenas for, any and all information resulting from interviews with appellant by the FBI, and the appellant’s draft file. This data was supplied. In addition, he asked for the selective service records indicating how many men registered with the Selective Service System in the United States and in North Carolina; the number who were prosecuted for failure to register in the nation and in North Carolina; and all records of the Selective Service dealing “with the non-registration or potential registrants” for the years 1973, 1972, 1971 and 1970. The statistics-request was disallowed as failing to show that the evidence to be produced would be necessary to an adequate defense. Under United States v. Conder, 423 F.2d 904, 910 (6 Cir. 1970), cert. denied, 400 U.S. 958, 91 S.Ct. 357, 27 L.Ed.2d 267, and Hemphill v. United States, 392 F.2d 45 (8 Cir. 1968), this was not error.

Probation should have been ordered for the appellant, he says, rather than the 26 months of imprisonment. This plea rests on the appellant’s age, 19 years, and his adherence since childhood to the teachings of the Friends, constantly advocating peace and non-violence. The District Judge found that sentencing under the Youth Corrections Act, 18 U.S.C. §§ 5005-5026, would not benefit the appellant. These considerations are for the trial judge, and save in exceptional circumstances this court will not presume to interfere. United States v. Pruitt, 341 F.2d 700 (4 Cir. 1965).

The judgment of the District Court will be affirmed.

Affirmed.

ORDER DENYING REHEARING

The petition of appellant Bruce Andrew Baechler for rehearing in banc, having been read and considered by the entire court but no judge in regular active service or who was a member of the panel that rendered the decision in this case having requested a poll on such suggestion, and the panel of the court which heard the argument on appeal of this case having concluded that the petition presents no ground warranting modification of the decision and opinion heretofore entered herein, it is

Ordered that the petition be, and it is hereby, denied.

      . Schneider v. Rusk, 377 U.S. 163, 168, 84 S.Ct. 1187, 12 L.Ed.2d 218 (1964).

      . It might no,t be amiss to mention in this milieu Executive Order # 11,803, issued by the President of the United States on September 16, 1974, relating to the treatment of non-registrants, even though the appellant’s offense was committed on March 29, 1973, one day after the expiration of the period given in the Executive Order as including cases covered by it.


author: JAMESON, District Judge:

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Betty Jean HEATH, Defendant-Appellant.
    No. 74-1624.
    United States Court of Appeals, Ninth Circuit.
    Dec. 26, 1974.

      Paul R. Romain, Portland, Or., for defendant-appellant.
    Tommy Hawk, Asst. U. S. Atty., Portland, Or., for plaintiff-appellee.
    Before BROWNING and TRASK, Circuit Judges and JAMESON, District Judge.

       Honorable W. J. Jameson, United States Senior District Judge for the District of Montana, sitting by designation.

   OPINION

JAMESON, District Judge:

Defendant-appellant, Betty Jean Heath, appeals from a conviction for voluntary manslaughter following a non-jury trial.

Proceedings in District Court

On August 3, 1973 appellant was charged by indictment as follows:

“That on or about July 18, 1973, at the Warm Springs Indian Reservation, within the Indian Country, in the District of Oregon, Betty Jean Heath, defendant herein, an Indian, did unlawfully and with malice aforethought, shoot and kill Teeman Heath, a human being and enrolled member of the Warm Springs Indian Tribe; in violation of Sections 1111 and 1153, Title 18, United States Code.”

During the trial on November 8, 1973 it was stipulated that the “defendant is an Indian and that the acts that are alleged in the indictment did occur within Indian country on the Warm Springs Reservation”. Appellant was found guilty of the lesser included offense of voluntary manslaughter and on January 21, 1974 was sentenced to six years imprisonment pursuant to 18 U.S.C. § 4208(a)(2).

On January 25, 1974 defendant filed a notice of appeal. On June 10, 1974 she filed a motion for a new trial and on June 11 a motion for arrest of judgment. Both motions were denied by written order on August 15, 1974 on the ground that the district court no longer had jurisdiction.

Appellant’s motions were based on the grounds that (1) the court lacked jurisdiction by reason of the fact that appellant was a “terminated Klamath Indian” and no longer an Indian within the meaning of 18 U.S.C. §§ 1152 and 1153; (2) the indictment was insufficient to confer jurisdiction under 18 U.S.C. § 1152 because it failed to allege that the victim was an Indian; and (3) the failure to charge appellant under § 1152 rather than § 1153 constituted prejudicial error. These same grounds are urged on this appeal.

Issues on Appeal

Four issues are raised by the respective parties:

(1) Whether the defendant, following her conviction and sentencing, may for the first time challenge the jurisdiction of the district court and the sufficiency of the indictment;

(2) Whether a “terminated Klamath Indian” may be indicted for murder under 18 U.S.C. § 1153;

(3) Whether an indictment charging defendant with the murder of an “enrolled member of the Warm Springs Indian Tribe” on the Warm Springs Reservation is sufficient to confer Federal jurisdiction pursuant to 18 U.S.C. § 1152; and

(4) Whether indicting the defendant under 18 U.S.C. § 1153 rather than 18 U.S.C. § 1152 constituted prejudicial error.

Statutes Involved

18 U.S.C. § 1152 reads:
“Except as otherwise expressly provided by law, the general laws of the United States as to the punishment of offenses committed in any place within the sole and exclusive jurisdiction of the United States, except the District of Columbia, shall extend to the Indian country.
“This section shall not extend to offenses committed by one Indian against the person or property of another Indian, nor to any Indian committing any offense in the Indian country who has been punished by the local law of the tribe, or to any case where, by treaty stipulations, the exclusive jurisdiction over such offenses is or may be secured to the Indian tribes respectively.”

18 U.S.C. § 1153 reads in pertinent part:

“Any Indian who commits against the person ... of another Indian or other person any of the following offenses, namely, murder, manslaughter, . . . within the Indian country, shall be subject to the same laws and penalties as all other persons committing any of the above offenses, within the exclusive jurisdiction of the United States.”

18 U.S.C. § 1111 defines murder in the first and second degrees and prescribes the punishment for persons who commit the offense “[wjithin the special maritime and territorial jurisdiction of the United States”.

18 U.S.C. § 1112 provides:
“(a) Manslaughter is the unlawful killing of a human being without malice. It is of two kinds:
“Voluntary — Upon a sudden quarrel or heat of passion.
“(b) Within the special maritime and territorial jurisdiction of the United States,
“Whoever is guilty of voluntary manslaughter, shall be imprisoned not more than ten years.”

Thus, appellant could be prosecuted for violation of §§ 1111 and 1112 under § 1153 if the appellant were an Indian, and under § 1152 if her husband were an Indian and appellant a non-Indian. If neither were an Indian the federal court would lack jurisdiction.

Timeliness of Challenge

Appellee contends that appellant may not now challenge the jurisdiction of the district court or the sufficiency of the indictment, arguing that appellant waived these defenses by failing to raise them at the trial and by stipulating that she is an Indian. Rule 12(b)(2) of the Federal Rules of Criminal Procedure, however, provides in relevant part: “Lack of jurisdiction or the failure of the indictment or information to charge an offense shall be noticed by the court at any time during the pendency of the proceeding.”

While other defenses and objections based on defects in the prosecution or in the indictment are waived by failure to raise them before trial, lack of jurisdiction over the subject matter is not subject to waiver and may be raised at any time. See Pon v. U. S., 168 F.2d 373, 374 (1 Cir. 1948); Sewell v. U. S., 406 F.2d 1289, 1292 (8th Cir. 1969). Since the issues raised by appellant concern the subject matter jurisdiction of the district court, they may be raised for the first time on appeal.

Effect of Klamath Termination Act

The Klamath Termination Act, 25 U.S.C. § 564 et seq. states in § 564 that the purpose of the Act “is to provide for the termination of Federal supervision over the trust and restricted property of the Klamath Tribe of Indians and of the individual members thereof . ”. (Emphasis added). § 564q provides that:

“ . . . individual members of the tribe shall not be entitled to any of the services performed by the United States for Indians because of their status as Indians and, except as otherwise provided in this Act, all statutes of the United States which affect Indians because of their status as Indians shall no longer be applicable to the members of the tribe, and the laws of the several States shall apply to the tribe and its members in the same manner as they apply to other citizens or persons within their jurisdiction”.

This court in Klamath and Modoc Tribes v. Maison, 338 F.2d 620, 622 (9th Cir. 1964) recognized that,

“ ‘The purpose of the Klamath Termination Act to (a) end federal supervision, (b) to remove from the Indians their special status as Indians, and (c) make laws applicable to them “in the same manner as they apply to other citizens” are express and unequivocal in the terms of the Act.’ ”

See also United States v. Burland, 441 F.2d 1199, 1202-1203 (9 Cir. 1971); cert. den. 404 U.S. 842, 92 S.Ct. 137, 30 L.Ed.2d 77 (1971).

Felix Cohen in his Handbook of Federal Indian Law (1942) stated that “in dealing with Indians the Federal Government is dealing primarily not with a particular race as such but with members of certain social-political groups towards which the Federal Government has assumed special responsibilities”. Id. at 5. Statutes like 18 U.S.C. § .1153 exemplify the “special responsibility” that the Government has assumed with respect to Indians. The Klamath Termination Act, as this court recognized in Maison, was intended to end the special relationship that had historically existed between the Federal Government and the Klamath Tribe. While anthropologically a Klamath Indian even after the Termination Act obviously remains an Indian, his unique status vis-a-vis the Federal Government no longer exists. Pursuant to 25 U.S.C. § 564q, Klamath Indians are subjected to state laws and are to be dealt with by the law no differently than any other citizen of a state. We conclude accordingly that 18 U.S.C. § 1153 cannot serve to confer Federal jurisdiction with respect to crimes committed by terminated Klamath Indians.

Sufficiency of the Indictment

The indictment did not refer to § 1152 as a basis for Federal jurisdiction. Appellant contends that even if it did specify § 1152 the indictment would be insufficient because it did not allege that the victim of the alleged offense was an Indian. The indictment did, however, charge appellant with killing “Teeman Heath, a human being and enrolled member of the Warm Springs Indian Tribe”. (Emphasis added).

Rule 7(c) of the Federal Rules of Criminal Procedure provides that “the indictment or the information shall be a plain, concise and definite written statement of the essential facts constituting the offense charged.” With respect to a post-trial challenge to the sufficiency of an indictment, this court stated:

“After trial, the indictment is sufficient if the necessary facts appear in any form or by fair construction can be found within its language. (Citations omitted). The true test is whether the indictment contains the elements of the offense intended to be charged and sufficiently apprises the defendant of what he must be prepared to meet.” United States v. Cluchette, 465 F.2d 749, 752-753 (1972).

Applying this test, we conclude that terming the victim an “enrolled member of the Warm Springs Indian Tribe” was sufficient for purposes of alleging Federal jurisdiction pursuant to 18 U.S.C. § 1152. In addition, we find that the testimony elicited during the trial by both parties established that Teeman Heath was in fact an Indian.

Prejudice

Finally, appellant contends that she was prejudiced by the fact that the indictment charged a violation of § 1153 instead of § 1152. It is clear, however, that appellant was fully apprised of the charge against her. The indictment set forth the elements of the offense necessary for a conviction under either § 1152 or § 1153. Her own counsel elicited testimony to the effect that Teeman Heath was a Warm Springs Indian. It is inconceivable that appellant would have presented any different defense to the charge of murder had she been indicted under § 1152 instead of § 1153. The error in the indictment was harmless beyond a reasonable doubt. See Henry v. United States, 432 F.2d 114 (9 Cir. 1970), modified on other grounds, 434 F.2d 1283 (9 Cir. 1971), cert. den. 400 U.S. 1011, 91 S.Ct. 576, 27 L.Ed.2d 625 (1971).

Affirmed.

      . No appeal was taken from this order. Appellant agrees that this court now has jurisdiction and contends that the jurisdictional issues she raised in her motion for new trial are now properly before this court.

      . The Federal Government has exclusive jurisdiction over offenses committed by or against Indians on the Warm Springs Reservation. 18 U.S.C. § 1162(a) granted jurisdiction to the State of Oregon over offenses committed by or against Indians in all Indian country “except the Warm Springs Reservation”.

      . For a more detailed analysis of §§ 1152 and 1153, see Mull v. United States, 402 F.2d 571, 573 (9 Cir. 1968), cert. den. 393 U.S. 1107, 89 S.Ct. 917, 21 L.Ed.2d 804 (1969).

      . Had appellant asserted her contention that • she is not an Indian before trial, the Government would have had an opportunity to change the indictment to allege a violation of § 1152 instead of § 1153. Instead appellant stipulated that she was an Indian, making the offense cognizable under § 1153.

      . In Henry the defendant Indian was charged with rape, an offense specified in § 1153. The indictment alleged an offense in violation of § 1152 instead of § 1153. The court held that the defendant had been indicted “under charges which are essentially the elements necessary for a conviction under § 1153” and concluded that, “Although the indictment made erroneous reference to § 1152, appellant Henry was not prejudiced . . . [and] the error was harmless beyond a reasonable doubt”.


author: EUGENE A. WRIGHT, Circuit Judge;

text:
    HOMEMAKERS, INC., OF LOS ANGELES, Plaintiff-Appellee, v. DIVISION OF INDUSTRIAL WELFARE and Industrial Welfare Commission of the State of California, Defendants-Appellants.
    No. 73-1786.
    United States Court of Appeals, Ninth Circuit.
    Dec. 31, 1974.

      Robert Leverman, Deputy Atty. Gen. (argued), San Francisco, Cal., for defendants-appellants.
    Phillip J. Gregory (argued), of Garrison, Gregory, Herndon & Townsend, San Francisco, Cal., for plaintiff-appellee.
    Before LÚMBARD, KOELSCH and WRIGHT, Circuit Judges.

       Senior Circuit Judge, United States Court of Appeals for the Second Circuit.

   OPINION

EUGENE A. WRIGHT, Circuit Judge;

This is an appeal from an order declaring invalid certain provisions of the California Labor Code and related orders of the California Industrial Welfare Commission requiring payment of premium overtime pay to covered women employees. The district court found that the provisions in question were in conflict with and superseded by Title VII of the Civil Rights Act of 1964 [42 U.S.C. § 2000e et seq. (1970)]. It also found that plaintiff’s failure to comply with the California statute did not give rise to an unlawful employment practice under Title VII.

Homemakers is an employer of domestic workers and persons who care for the sick in patients’ homes. It initiated this action to restrain appellant state agencies from enforcing against it those women’s premium overtime pay provisions in Cal. Labor Code §§ 1350 and 1350.5 which it claimed would require it to discriminate in favor of women in violation of Title VII.

In response, appellants reasoned that the challenged statutes and orders presented no inevitable conflict with federal law, since Homemakers could comply readily with both federal and state requirements by extending the benefits of the premium overtime pay legislation to its male as well as to its female employees. Indeed, they argued that state and federal “equal pay” laws, see Cal. Labor Code § 1197.5 (1970); 29 U.S.C. § 206(d) (1970), require employers to pay both sexes at the higher overtime pay rates provided for women. Appellants relied also on Equal Employment Opportunity Commission [EEOC] guidelines which make it a violation of Title VII for an employer to refuse to hire female employees in order to avoid payment of overtime, or for an employer to fail to provide its male employees with the same benefits required under state law for its female employees.

The district court rejected these arguments, and refused to follow an Eighth Circuit decision extending the benefits of the Arkansas women’s premium overtime pay statute to all employees in the state on the same grounds as those advanced by appellants. In so holding, the district court also ruled that the EEOC’s power to issue procedural regulations does not include authority to issue regulations which would modify state substantive law to the degree urged by appellants.

Similarly, the district court found that it would be beyond its own power to interpret the challenged statutes in a way which would significantly expand the statutorily designated class of beneficiaries. Although such an interpretation might provide the consistency between the challenged statutes and federal law necessary for upholding the former, it would usurp the legislative power vested exclusively in the state.

Such judicial restraint appears particularly warranted in light of the legislative intent which both parties concede to underlie those portions of the state labor code of which the challenged provisions are a part. This court has previously relied on this intent (to afford special protection for women employees) in invalidating other “protective” legislation in the California Labor Code as unlawfully discriminatory.

We are persuaded by Judge Renfrew’s historical observation that the premium overtime pay provisions of sections 1350 and 1350.5 were part and parcel of the entire body of state law seeking to provide special protection for women workers. We are also persuaded by his conclusion that it is not within the province of the federal courts to attempt to determine how far, if at all, subsequent state legislation has shown an intent to redirect the original focus of these premium pay provisions, unless that intention is clearly shown. This is particularly true when the reading requested by appellants (to extend the premium overtime pay provisions to male workers) would impose a sizeable economic burden on employers affected by sections 1350 and 1350.5.

Finally, we note that the California legislature has recently enacted legislation which will cure the defects of the earlier enactments by expressly allowing the Industrial Commission to prescribe overtime premium pay rates applicable to male and female employees alike. Act of Oct. 1, 1973, Assembly Bill No. 478. Enactment of this legislation, after a similar bill had been vetoed the previous year, would seem to indicate the legislature’s realization that the prior version of the overtime pay provisions inaccurately expressed, or was inadequate to express, its current policy.

We agree with the opinion of the district court, and affirm its holding that the statutes and orders in question conflict with the Civil Rights Act of 1964 and therefore cannot be enforced against plaintiff-appellee Homemakers.

Affirmed.

      . The pertinent provision of Title VII is 42 U.S.C. § 2000e-2, which reads in relevant part:
      “(a) It shall be an unlawful employment practice for an employer—
      “(1) to fail or refuse to hire or to discharge any individual, or otherwise to discriminate against any individual with respect to his compensation, terms, conditions, or privileges of employment, because of such individual’s race, color, religion, sex, or national origin; or
      “(2) to limit, segregate, or classify his employees or applicants for employment in any way which would deprive or tend to deprive any individual of employment opportunities or otherwise adversely affect his status as an employee, because of such individual’s race, color, religion, sex, or national origin.
      “(e) Notwithstanding any other provision of this subchapter, (1) it shall not be an unlawful employment practice for an employer to hire and employ employees on the basis of his religion, sex, or national origin in those certain instances where religion, sex, or national origin is a bona fide occupational qualification reasonably necessary to the normal operation of that particular business or enterprise .

      . Cal. Labor Code § 1350. Maximum hours per day and week

      “No female shall be employed in any [of the designated industries], more than eight hours during any one day of 24 hours or more than 48 hours in one week, except as provided in Section 1350.5.”
      § 1350.5. Employees covered under Fair Labor Standards Act; overtime; exceptions; airline female employees

      (a) Employers of employees covered under the .provisions of the Fair Labor Standards Act may employ females up to 10 hours during any one day of 24 hours or up to 58 hours in one week, provided that they are compensated at the rate of l'/i times the regular rate of pay for time worked for one employer in excess of eight hours in any one day or 40 hours in any one week.
      “(b) The provisions of subdivision (a) shall not apply to: (1) employers whose employees are exempted in Section 13 of the Fair Labor Standards Act as amended through February 1, 1967, from the provisions of Section 7 of the Fair Labor Standards Act; (2) employers whose employees are exempted in Section 7 of the Fair Labor Standards Act, as amended through February 1, 1967, from the provisions of Section 7 of the Fair Labor Standards Act, if the employees are not entitled under such exemptions in Section 7 to l'/2 times their regular rate of pay until they have worked more than 48 hours in one week; and (3) employers whose employees are engaged in the laundering, cleaning, or repairing of clothing, or in the clothing manufacturing industries.

      . The district court’s opinion is reported at 356 F.Supp. 1111 (N.D.Calif.1973).

      . See Hays v. Potlatch Forests, Inc., 465 F.2d 1081 (8th Cir. 1972).

      . 356 F.Supp. at 1113.

      . 356 F.Supp. at 1112.

      . See Rosenfeld v. Southern Pacific Co., 444 F.2d 1219 (9th Cir. 1971) (weightlifting and hours limitations on female employees); Mengelkoch v. Industrial Welfare Comm’n, 442 F.2d 1119 (9th Cir. 1971) (hours limitations). See also Burns v. Rohr Corp., 346 F.Supp. 994 (S.D.Calif.1972) (rest breaks only required for women); Local 246, Utility Workers v. Southern California Edison Co., 320 F.Supp. 1262 (C.D.Calif.1970) (weightlifting restrictions); Sail’er Inn v. Kirby, 5 Cal.3d 1, 95 Cal.Rptr. 329, 485 P.2d 529 (1971) (laws forbidding women bartenders).

      . At least one state supreme court has recently adopted this view. In Idaho Trailer Coach Ass’n v. Brown, 95 Idaho 910, 523 P.2d 42 (S.Ct.Idaho, 1974), the Idaho Supreme Court found that subsequent state antidiscrimination legislation had repealed that state’s premium overtime pay for women law by implication. Therefore, the Idaho court did not need to consider the trial court’s alternative holding that the challenged statute was also unenforceable because it was in conflict with Title VII.

      . Moreover, it would be particularly speculative for a court to extent the benefits of the statute only to the male employees of these employers covered by the challenged provisions. To do so would seem to assume that the legislature would want the same group of industries subject to premium overtime pay requirements for all employees as had originally been selected as the foci of the maximum hours limitations for women set out in section 1350.


author: PER CURIAM.

text:
    Charles LEASURE, Petitioner-Appellant, v. A. L. LOCKHART, Superintendent, Cummins Unit, Arkansas Department of Corrections, Respondent-Appellee.
    No. 74-1520.
    United States Court of Appeals, Eighth Circuit.
    Submitted Jan. 10, 1975.
    Decided Jan. 13, 1975.

      Robert A. Newcomb, for Inmates, Ark. Dept, of Correction, Pine Bluff, Ark., for petitioner-appellant.
    Jim Guy Tucker, Atty. Gen., and Jack T. Lassiter, Asst. Atty. Gen., Little Rock, Ark., for respondent-appellee.
    Before GIBSON, Chief Judge, and HEANEY and ROSS, Circuit Judges.
   PER CURIAM.

In 1971, the petitioner was convicted in Arkansas state court of the first degree rape of his seven-year-old daughter. He was sentenced to imprisonment for forty years. After he was denied relief by the state supreme court on direct appeal and on appeal of the denial of a post-conviction motion, he filed a petition for habeas corpus in federal District Court. The sole ground for relief alleged in that petition was that he had been denied effective assistance of counsel at trial. After an evidentiary hearing, the District Court denied the petition. On appeal, the petitioner contends that the record of the evidentiary hearing does not contain sufficient evidence to affirmatively show that he received the effective assistance of counsel. We disagree.

The petitioner asserts that his representation was ineffective for a number of reasons. First, he claims that his counsel waived a jury trial without his consent and against his wishes. His counsel, Charles Ledbetter, testified that there were compelling strategic reasons for waiving the jury, including the fear that the victim and her mother would testify that there had been prior similar incidents and the fact that there was inflammatory direct evidence in the form of blood-stained bedsheets and panties. In light of these and other facts, Ledbetter testified that he felt that it would be impossible to convince a jury that there were any mitigating circumstances, and that the death penalty would be a very likely jury verdict. Ledbetter further testified that the petitioner was advised of all this and that the petitioner gave him the power to make the final decision on the matter. We cannot say that the District Court was clearly erroneous in crediting Led-better’s testimony.

Second, the petitioner claims that his representation was ineffective, because of counsel’s decision not to call the prosecutrix as a hostile witness. Ledbetter testified that the petitioner had repeatedly expressed the fear before trial that the state would call his daughter as a witness, and that he had urged Ledbetter to do everything possible to keep her off the stand. He testified that there was no reason to believe that the daughter’s testimony would be helpful, that there was a substantial risk that she would testify to earlier similar incidents, and that he was delighted when the state failed to call her as expected. We agree with the District Court that the decision not to call the victim as a hostile witness was a reasonable one.

Third, the petitioner alleges that a confession introduced against him at trial had been coerced by the use of force, in that his wife threatened him with a pistol at the time of the confession. He claims that he informed counsel of this fact, but that counsel failed to investigate and failed to assert the defense of coercion. Ledbetter testified that the petitioner had made no mention of such circumstances, despite repeated questioning about the events surrounding the confession. He testified that he would have been delighted to pursue any defense in this vexing case, and the record reflects that he did vigorously attempt to exclude the confession on the ground of incapacity. Moreover, the police officer who took the confession testified that he did not see the petitioner’s wife display a gun or threaten the petitioner. To the contrary, the officer testified that it was at the petitioner’s request that his wife was present, and that the scene of the confession was one of tears on the part of both husband and wife, as well as pleas for forgiveness. Once more, the District Court resolved an issue of credibility against the petitioner. We cannot say that this resolution of the facts was clearly erroneous.

Finally, the petitioner complains because his counsel staked all on the insanity defense, foregoing a defense to the underlying charge of rape, despite the fact that the petitioner steadfastly denied that he had committed the act. Ledbetter testified that the evidence against the petitioner regarding commission of the act was overwhelming, including physical evidence, medical testimony of a doctor who had examined the victim, possible testimony of the victim and her mother, testimony by a psychiatrist concerning admissions by the petitioner, and the signed confession. In light of that evidence, his prime objective was to avoid penalties of death or life imprisonment — an objective which he achieved. Moreover, Ledbetter directly contradicted the petitioner’s claim that he had protested his innocence throughout the pretrial preparation. Instead, according to counsel’s testimony, the petitioner acknowledged the events and often broke down and cried in discussing them. We cannot say that the District Court’s acceptance of Ledbetter’s testimony was clearly erroneous.

In light of the District Court’s factual findings which are amply supported by the evidence, we agree that the petitioner received effective assistance of counsel with respect to the issues here asserted. See McQueen v. Swenson, 498 F.2d 207 (8th Cir. 1974). We, therefore, affirm.

      . Leasure v. State, 251 Ark. 887, 475 S.W.2d 535 (1972).

      . Leasure v. State, 254 Ark. 961, 497 S.W.2d 1 (1973). In the course of this opinion, the court noted that the petitioner’s effective assistance of counsel claim bordered on the frivolous, since he had sought to have the court appoint the same counsel or someone equally “good” on his first appeal, and desired to have that counsel represent him in his post-conviction proceeding. Id. at 963, 497 S.W.2d 1.

      . We employ the clearly erroneous standard of Federal Rule of Civil Procedure 52(a) in reviewing the findings of fact of the District Court in habeas corpus proceedings. See Taylor v. Swenson, 458 F.2d 593, 597 & n. 7 (8th Cir. 1972).

      . The petitioner does not challenge his counsel’s decision to try the insanity defense solely on the basis of written medical reports, foregoing the opportunity to cross-examine the examining psychiatrists. Nor does it appear that such a contention has been raised in state post-conviction proceedings.


author: LEVIN H. CAMPBELL, Circuit Judge.

text:
    UNITED STATES of America, Appellee, v. Harold M. ROMANOW, Defendant-Appellant.
    No. 74-1273.
    United States Court of Appeals, First Circuit.
    Submitted Dec. 3, 1974.
    Decided Jan. 3, 1975.

      Peter J. Rubin, Jerome F. Goldberg, and Bernstein, Shur, Sawyer & Nelson, Portland, Me., on brief, for appellant.
    Peter Mills, U. S. Atty. and Rufus E. Stetson, Jr., Asst. U. S. Atty., on brief, for appellee.
    Before COFFIN, Chief Judge, McENTEE and CAMPBELL, Circuit Judges.
   LEVIN H. CAMPBELL, Circuit Judge.

Appellant and his brother, co-owners of a large furniture store, were indicted and tried separately for violations of Int. Rev.Code § 7206(1), which makes it a felony for any person to willfully make and subscribe

“any return, statement, or other document, which contains or is verified by a written declaration that it is made under the penalties of perjury, and which he does not believe to be true and correct as to every material matter.”

The four count indictment against appellant was based upon incorrect entries in four Employers Quarterly Federal Tax Returns, IRS Form 941, filed in 1970 and 1971. His brother was indicted on 3 counts for quarters in 1969 and 1970. Both were found guilty on all counts, and both filed appeals here.

It is admitted that the returns were incorrect and that appellant had signed those which were the subject of his indictment. Appellant contends, however, that he cannot be found to have willfully violated the statute unless the evidence established that he knew of the falsity of these entries. He maintains that there was no evidence that he had ever examined the contents of the returns (which were prepared by a bookkeeper), merely that he had signed them; and that the jury thus had no basis from which to infer the requisite knowledge.

Appellant’s brother presented this same claim in his appeal, and we decided it was without merit. United States v. Romanow, 505 F.2d 813 (1st Cir. 1974). We held that the jury could “conclude from nothing more than the presence of his uncontested signature that he had in fact read the Form 941.” 505 F.2d at 814. We reach the same conclusion here.

Appellant’s second claim is that the admitted falsity in the return was not a “material matter” and therefore did not violate the statute. Examination of this contention requires some understanding of the taxing scheme of which Form 941 is a part.

Employers are required to withhold from their employees’ wages the federal employment taxes imposed on those salaries. See Int.Rev.Code §§ 3102, 3402. The employer holds the sums collected in trust for the Government and is required by the Commissioner of Internal Revenue to make periodic deposits of these monies in depositary banks of the federal reserve system. See Int.Rev.Code §§ 3501, 6302; Treas.Regs. 31.3501-31.-6302(c) — 4. The Internal Revenue Service (IRS) “draws on” these accounts to satisfy the employer’s liability for the withheld taxes.

The employer is required to file Form 941 quarterly. It contains, among other items, information as to the total wages paid which were subject to the withholding tax, the amount of tax actually withheld by the employer, a computation of the tax liability of the employer, and the amount of withheld tax monies actually deposited in the federal reserve bank for the quarter. The form then contains instructions for adjusting the total deposits figure to reflect any previous over-payments by the taxpayer, as well as several lines for calculating the taxpayer’s current tax balance. By computing these the employer determines whether he is to remit additional funds to the Government or is entitled to a refund or credit from excess deposits. Appellant is charged with falsely reporting the sums actually deposited for the quarter. He subscribed returns indicating that sums had been deposited with the federal reserve bank when in fact they had not. The district court instructed the jury that these misstatements would be material as a matter of law.

Appellant urges that the test of materiality under section 7206(1) is whether the statement was necessary to compute the tax involved or could influence or affect the IRS in carrying out its function. United States v. Rayor, 204 F.Supp. 486 (S.D.Cal.1962); United States v. Di Varco, 343 F.Supp. 101 (N.D. Ill.1972), aff’d, 484 F.2d 670 (7th Cir. 1973). Assuming this to be so, we think the questioned data is plainly material. It is a necessary item to compute what is currently due and owing between taxpayer and the Government. If deposits do not equal or exceed the current tax liability, taxpayer must remit to the IRS the balance due. Moreover, an IRS representative examining Form 941 could ascertain whether the taxpayer was in compliance with the statute or was in default. The latter determination would undoubtedly lead the IRS to take action to protect its tax revenues.

Appellant contends that the IRS makes no use of the information he is charged with falsifying. Form 941 returns are normally processed by a computer which is not programmed to consider the entry regarding deposits made for the quarter. Instead, the computer receives data directly from the depositary banks regarding deposits actually made. It then compares this information against the employer’s total reported tax liability. It follows, appellant maintains, that the information at issue was immaterial. But this argument confuses materiality with the consequences of a falsehood. We have said that the primary purpose of section 7206(1) “is to impose the penalties of perjury upon those who wilfully falsify their returns regardless of the tax consequences of the falsehood.” Gaunt v. United States, 184 F.2d 284, 288 (1st Cir. 1950); see Di Varco, supra, 343 F.Supp. at 103. Perjury occurs when the false entry is made, even if never relied upon. See United States v. Noveck, 273 U.S. 202, 206, 47 S.Ct. 341, 71 L.Ed. 610 (1927). The falsified information was no less material because the Government chose to rely on information furnished by the depositary banks rather than that submitted by the taxpayer. Materiality under section 7206(1) is to be measured objectively by a statement’s potential rather than by its actual impact. Cf. United States v. Quirk, 167 F.Supp. 462, 464 (E.D.Pa. 1958), aff’d, 266 F.2d 26 (3d Cir. 1959); Brandow v. United States, 268 F.2d 559, 564-565 (9th Cir. 1959).

Appellant’s final argument is that even if the deposit information might be material, the trial court erred in ruling it so as a matter of law. We find no error. While there is some suggestion in another context that the issue of materiality under section 7206(1) may be submitted to a jury, United States v. Null, 415 F.2d 1178, 1181 (4th Cir. 1969), we think it properly within the province of the trial judge — at least in the ordinary case where the underlying facts are not themselves in dispute. Cf. United States v. East, 416 F.2d 351, 355 (9th Cir. 1969). The long accepted general rule is that “the materiality of what is falsely sworn, when an element in the crime of perjury, is [a question] for the court.” Sinclair v. United States, 279 U.S. 263, 298, 49 S.Ct. 268, 273, 73 L.Ed. 692 (1929). See generally Annot., 62 A.L. R.2d 1027 (1958). In the present case, the materiality was beyond question.

The judgment of the district court is affirmed.