author: RIVES, Circuit Judge.

text:
    Harry M. HONEYCUTT, Plaintiff-Appellant, v. AETNA INSURANCE COMPANY, Defendant-Appellee.
    No. 73-1897.
    United States Court of Appeals, Seventh Circuit.
    Argued Sept. 24, 1974.
    Decided Jan. 10, 1975.
    Certiorari Denied June 9, 1975.
    See 95 S.Ct. 2416.

      Philip J. McGuire, Kent G. Chetlain, Chicago, 111., for plaintiff-appellant.
    Daniel J. Leahy, Chicago, 111., for defendant-appellee.
    Before SWYGERT, Chief Judge and CUMMINGS and RIVES, Circuit Judges.

       Circuit Judge Richard T. Rives of the Fifth Circuit is sitting by designation.

   RIVES, Circuit Judge.

Honeycutt brought this diversity action against Aetna on a policy insuring Honeycutt against loss or damage to his home by fire. On August 18, 1970, and again on August 23, 1970, while the policy was in effect, Honeycutt’s home was damaged by fire. Honeycutt gave Aetna timely notice and submitted proof of loss alleging damage of $4,283.92 by the fire of August 18 and damage of $65,-835.39 by the fire of'August 23.

Aetna refused to make any payment. In its answer to Honeycutt’s complaint Aetna alleged “that the Plaintiff failed to use all reasonable means to save and preserve the property at and after the loss.” (App. 21) Aetna’s answer also alleged that Honeycutt fraudulently misrepresented the amount of the loss in the fire of August 23, 1970.

Pursuant to order of court the case was tried solely on the question of liability. On trial, Aetna based its defense on a contention that Honeycutt set or procured the setting of the fires. Aetna’s defense was treated by the parties and denominated by the court as a charge that Honeycutt committed arson.

The jury returned its verdict in favor of Aetna: “We, the Jury, find for the defendant Aetna Insurance Company, and find said company not liable on the insurance policy in question.” (App. 6) Pursuant to that verdict, final judgment was entered for Aetna. The court denied Honeycutt’s post-trial motions for judgment n. o. v. or, in the alternative, for a new trial. This appeal followed.

The issues presented for review are framed by Honeycutt’s contentions that the district court committed reversible error in the following ways: (1) In allowing the introduction of evidence improperly obtained by the authorities, and/or by (2) Aetna’s representatives, (3) in its instructions to the jury, and (4) in denying Honeycutt’s motion for new trial based on newly discovered evidence. Decision of these issues, of course, necessitates careful consideration of the evidence.

The Facts

At the time of each fire, Honeycutt lived alone. His wife had died on October 6, 1969, and his four sons were away from home — three in the Navy and one in college. In the Summer of 1968, Honeycutt first listed for sale with a realtor the house and the nine acres of land on which it was located. After receiving no offer, he listed the property with another realtor and a sale on undisclosed terms was consummated in the Spring of 1971, more than six months after the fires.

In August, 1970, when the fires took place, it appears that Honeycutt’s home place was his only substantial asset. The property was encumbered with a first mortgage totaling $17,965.17 to Cook County Savings & Loan Association of which $7,000 had been borrowed on April 7, 1970, and a second mortgage of about $20,000 to the First National Bank & Trust Company of Barrington, Illinois. Honeycutt also had an unsecured debt of $300 to the Lake Shore National Bank. His checking account balance was $142 and he had no personal savings account, although he was trustee of a savings account for his sons. He owned no securities or any other real estate. Income tax returns reveal little income. Honeycutt reported on his tax returns a loss of $3,428.64 in 1968 and a loss of $3,716.62 in 1967, and in 1969 he reported total income of $3,897.53 for himself and his wife. At the time of the fire, Honeycutt was working for Weber Plastic Company, selling their products as well as products which were designed by him and manufactured on an individual basis by Weber Plastics.

The first fire took place on Tuesday, August 18, 1970, and started under the kitchen sink. Intense heat from the fire melted the solder holding the water pipe joints together. Water rushed from the pipe and extinguished the fire, but also soaked the carpets in the house. In addition, there was extensive smoke damage to the house. Honeycutt claimed that he had left the house about 7:00 A.M. to make a business trip to Stevens Point, Wisconsin. He reported the fire to the Barrington Hills police about 7:00 P.M.; and they, in turn, reported the fire to the fire department.

Honeycutt did not spend the night of August 18 in his home, but checked into a local motel where he continued to live until some time after the second fire. On August 19, the day on which Honeycutt reported the August 18 fire to Aetna, the Company sent two adjustors to examine the fire damage. Later the same day one of them returned to make another inspection. On both the 19th and 20th, Honeycutt and various commercial concerns worked to clean up the damage. On the weekend of August 22-23, he alone continued the clean-up efforts.

The second fire took place on Sunday, August 23, 1970. Honeycutt had spent the day working at his house. A telephone repairman came to repair the telephone around 1:00 or 2:00 P.M. After the repairman left, Honeycutt hung some laundry on an outside line and removed from the house some wet corrugated boarding. He then mowed his 9-acre yard. Honeycutt testified that, after finishing the mowing, he went to the house, where he discovered the fire. He drove to a neighbor’s house to ask the neighbor to call the police and the fire department. The official time of the alarm at the fire department was 7:35 P.M.

The fire department extinguished the fire but not before it caused serious damage. Subsequent investigation revealed that there had been separate fires in the living room, bedroom, the TV room, the kitchen, the dining room, and the furnace room. The local police chief made an inspection of the premises on the evening of the fire. The next day, Monday, August 24, he and Fire Chief Mertens, Lt. Arens of the local fire department and Deputy State Fire Marshal Valley made inspections of the Honeycutt house. On the evening of the same day, Honeycutt met with Police Chief Hummel and Fire Marshal Valley in Hummel’s office. There, Honeycutt stated that he wanted to learn the origin of the fire and would cooperate 100 per cent with the investigation.

On Wednesday, August 26, around 10:00 A.M., Police Chief Hummel and Deputy State Fire Marshal Schaefer inspected the Honeycutt house and took samples of the burned materials. They entered the house by removing a sheet of plywood which was barring the door. Honeycutt did not learn of this search until the trial. This is the first of the searches claimed improper by Honeycutt.

On Thursday, August 27, there was another inspection of the house which was made by Lt. Mertens of the local fire department, Deputy State Fire Marshals Schaefer and Valley, a private investigator Sutherland, local Police Chief Hummel, Aetna’s consulting engineer Alva Todd, Aetna’s counsel Leahy, and a photographer for Aetna, and possibly other persons. At the request of Hummel, Honeycutt let them all enter to inspect the house. Honeycutt makes no claim in regard to the propriety of that search. There was another search on Friday, August 28 or on Saturday, August 29 (the witness, Deputy State Fire Marshal Schaefer, was unsure of the date), at which time Honeycutt, Leahy, Todd and Aetna Adjuster Putnam were present. Honeycutt raises no claim as to the propriety of that search.

Honeycutt does claim that another search made on August 29 was improper. On that date, while Honeycutt was mowing the yard, Leahy and an Aetna photographer made an inspection of the house. Again the plywood sheet was removed to gain entrance to the house. When Honeycutt returned to the house, Leahy, who was standing in the front entrance, told him that the photographer was inside. When the photographer finished, he came out; and the two men drove away.

There was much stronger evidence that the fires were intentionally set than that Honeycutt was the guilty party. He had no criminal record and was not charged with arson by the authorities. The evidence tending to connect Honeycutt with the setting of the fires is circumstantial. The most damaging evidence against him is the showing of possible motive on his part to set the fires and the absence of evidence of motive on the part of any other person.

We turn now to the issues presented for review.

I.

Admission of Evidence Obtained by State or City Authorities.

Honeycutt claims that the district court should have excluded the evidence obtained by the authorities in their August 26 search of Honeycutt’s house and that the admission of that evidence was error of a constitutional dimension. We should reach and decide such a claim only if necessary, and we therefore examine first whether we may avoid reaching the asserted claim.

The failure to exclude the evidence obtained by this search cannot be termed harmless. That evidence materially supplemented evidence obtained when Honeycutt was present and went strongly to prove that the fires were intentionally set by some person. We do not believe that admission of the evidence obtained by the search was harmless beyond a reasonable doubt.

Nor can we imply consent from Honeycutt’s cooperation in showing the house on the day before the August 26 search, or his stated desire to cooperate 100 per cent with the arson investigation. Those facts show no more than that Honeycutt would probably have consented to the search if he had been asked. The district court found that “There is some evidence of consent to enter the home, but it is not too compelling.” (App. 252.) We find all of the evidence to be consistent with Honeycutt’s testimony that “I asked for their help in determining what caused the fire, and I offered my cooperation 100 per cent. Any time they wanted me to open the house, take them in there, take them through or assist them, I would do so.” (App. 271.) We cannot imply consent to a search of which Honeycutt had no notice.

No argument can be made that there were exigent circumstances, that the officers were in hot pursuit of a criminal, or that it was necessary immediately to search the premises to avoid the destruction of evidence. A warrant-less search of Honeycutt’s home to find evidence of commission of arson cannot be justified as an administrative search under Frank v. Maryland, 359 U.S. 360, 365, 367, 79 S.Ct. 804, 3 L.Ed.2d 877 (1959). More certainly such a search cannot be justified under Camara v. Municipal Court, 387 U.S. 523, 534, et seq., 87 S.Ct. 1727, 18 L.Ed.2d 930 (1967).

The learned district judge seems to have thought that the evidence was admissible under the “equities” or peculiar circumstances of this case. In a thoughtful ruling, he said:

“ * * * We have pending a motion to strike testimony and to exclude exhibits, which flowed from the entry of persons into the Honeycutt home without his consent.
“And I have considered this matter since it arose this morning and had the opportunity to look into it somewhat over the noon hour.
“The problem is unusual in the context of this case in several aspects. There is some evidence of consent to enter the home, but it is not too compelling.
“The basic problem is whether the right, under the Fourth Amendment, asserted here is limited to criminal cases, and the use of evidence obtained by the invasion of the home in criminal cases.
“That question is unique, in that there seems to be a dirth [sic] of authority on this subject, I was unable to find much. There isn’t much help in the reported decisions.
“In the context of this case, however, I think the equities are such— and the atmosphere of the insurance investigation, the conditions of the policy and the attitude of Mr. Honeycutt — all point to the fact that in this case, at least, I should not strike the testimony and the exhibits.
“So that that motion will be denied.” (App. 252-253.)

We assume that “the conditions of the policy” to which the judge’s ruling referred included the following provisions:

“ * * * The insured, as often as may be reasonably required, shall exhibit to any person designated by this company all the remains of any property herein described, and submit to examination under oath by any person named by this company, and subscribe the same * * *.”

That provision clearly does not authorize a warrantless search of the insured’s home. Nor can we find such a search justified by any of the equities or peculiar circumstances of this case. So to hold would be contrary to the “one governing principle” referred to in Camara, supra, 387 U.S. at 528, 529, 87 S.Ct. at 1730:

“Nevertheless, one governing principle, justified by history and by current experience, has consistently been followed: except in certain carefully defined classes of cases, a search of private property without proper consent is ‘unreasonable’ unless it has been authorized by a valid search warrant.”

In brief, we can find no way to decide this case without reaching Honeycutt’s “claim of a constitutional dimension.” This Court must decide whether the Fourth and the Fourteenth Amendments require in civil cases that the exclusionary rule be extended to situations where private parties seek to introduce evidence obtained through unauthorized searches made by state officials.

At the outset we recognize the distinction between constitutional rights and the implementation of those rights. The simple language of the Fourth Amendment itself would probably seem clear enough to a person not familiar with some of the literally thousands of pages of complicated judicial commentary which that language has spawned:

“The right of the people to be secure in their persons, houses, papers, and effects, against unreasonable searches and seizures, shall not be violated, and no Warrants shall issue, but upon probable cause, supported by Oath or affirmation, and particularly describing the place to be searched, and the persons or things to be seized.”

Fortunately for this Court, it is now settled that the exclusionary rule, at least insofar as it relates to searches and seizures, is not itself a constitutional right, but, perhaps of equal importance, it is the sole judicial technique for implementing the vital Fourth' Amendment guaranty against unreasonable searches and seizures. The very recent case of United States v. Calandra, 414 U.S. 338, 94 S.Ct. 613, 38 L.Ed.2d 561 (1974), so nearly decides the issue in this case that we quote from it at length. Mr. Justice Powell, speaking for the Court, said:

“In the instant case, the Court of Appeals held that the exclusionary rule of the Fourth Amendment limits the grand jury’s power to compel a witness to answer questions based on evidence obtained from a prior unlawful search and seizure. The exclusionary rule was adopted to effectuate the Fourth Amendment right of all citizens ‘to be secure in their persons, houses, papers, and effects, against unreasonable searches and seizures . ’ Under this rule, evidence obtained in violation of the Fourth Amendment cannot be used in a criminal proceeding against the victim of the illegal search and seizure. Weeks v. United States, 232 U.S. 383 [34 S.Ct. 341, 58 L.Ed. 652] (1914); Mapp v. Ohio, 367 U.S. 643 [81 S.Ct. 1684, 6 L.Ed.2d 1081] (1961). This prohibition applies as well to the fruits of the illegally seized evidence. Wong Sun v. United States, 371 U.S. 471 [83 S.Ct. 407, 9 L.Ed.2d 441] (1963); Silverthorne Lumber Co. v. United States, 251 U.S. 385 [40 S.Ct. 182, 64 L.Ed. 319] (1920).
“The purpose of the exclusionary rule is not to redress the injury to the privacy of the search victim:
“ ‘[T]he ruptured privacy of the victims’ homes and effects cannot be restored. Reparation comes too late.’ Linkletter v. Walker, 381 U.S. 618, 637 [85 S.Ct. 1731, 1742, 14 L.Ed.2d 601] (1965).
Instead, the rule’s prime purpose is to deter future unlawful police conduct and thereby effectuate the guarantee of the Fourth Amendment against unreasonable search and seizures:
“ ‘The rule is calculated to prevent, not to repair. Its purpose is to deter — to compel respect for the constitutional guaranty in the only effectively available way — by removing the incentive to disregard it.’ Elkins v. United States, 364 U.S. 206, 217 [80 S.Ct. 1437, 1444, 4 L.Ed.2d 1669] (1960).
Accord, Mapp v. Ohio, supra, at 656 (1961); Tehan v. Shott, 382 U.S. 406, 416 [81 S.Ct. 1684, 1692, 6 L.Ed.2d 1081] (1966); Terry v. Ohio, 392 U.S. 1, 29 [88 S.Ct. 1868, 20 L.Ed.2d 889] (1968). In sum, the rule is a judicially created remedy designed to safeguard Fourth Amendment rights generally through its deterrent effect, rather than a personal constitutional right of the party aggrieved.
“Despite its broad deterrent purpose, the exclusionary rule has never been interpreted to proscribe the use of illegally seized evidence in all proceedings or against all persons. As with any remedial device, the application of the rule has been restricted to those areas where its remedial objectives are thought most efficaciously served. The balancing process implicit in this approach is expressed in the contours of the standing requirement. Thus, standing to invoke the exclusionary rule has been confined to situations where the Government seeks to use such evidence to incriminate the victim of the unlawful search. Brown v. United States, 411 U.S. 223 [93 S.Ct. 1565, 36 L.Ed.2d 208] (1973); Alderman v. United States, 394 U.S. 165 [89 S.Ct. 961, 22 L.Ed.2d 176] (1969); Wong Sun v. United States, supra; Jones v. United States, 362 U.S. 257 [80 S.Ct. 725, 4 L.Ed.2d 697] (1960). This standing rule is premised on a recognition that the need for deterrence and hence the rationale for excluding the evidence are strongest-where the Government’s unlawful conduct would result in .imposition of a criminal sanction on the victim of the search.” (Footnotes omitted.) 414 U.S. 347-348, 94 S.Ct. 619.

Mr. Justice Brennan dissenting on behalf of himself, Mr. Justice Douglas and Mr. Justice Marshall argued eloquently that uppermost in the minds of the framers of the rule was not its deterrent effect but

“ * * * the twin goals of enabling the judiciary to avoid the taint of partnership in official lawlessness and of assuring the people — all potential victims of unlawful government conduct — that the government would not profit from its lawless behavior, thus minimizing the risk of seriously undermining popular trust in government.” 414 U.S. 357, 94 S.Ct. 624.

The dissenting opinion quotes not only from Weeks v. United States, 232 U.S. 383, 34 S.Ct. 341, 58 L.Ed. 652 (1914), the decision which fashioned the exclusionary rule, but also from the notable dissent of Mr. Justice Brandeis and Mr. Justice Holmes in Olmstead v. United States, 277 U.S. 438, 48 S.Ct. 564, 72 L.Ed. 944 (1928), from Mr. Chief Justice Warren’s opinion for the Court in Terry v. Ohio, 392 U.S. 1, 88 S.Ct. 1868, 20 L.Ed.2d 889 (1968) (including “The rule also serves another vital function — ‘the imperative of judicial integrity’ ”), and from Mr. Justice Holmes’ opinion for the Court in Silverthorne Lumber Co. v. United States, 251 U.S. 385, 392, 40 S.Ct. 182, 183, 64 L.Ed. 319 (including “The essence of a provision forbidding the acquisition of evidence in a certain way is that not merely evidence so acquired shall not be used before the Court but that it shall not be used at all”) (see 414 U.S. at 358-362, 94 S.Ct. 613).

The majority opinion responds in its footnote 8, 414 U.S. 352, 94 S.Ct. 613, repeating the quotation from Mr. Justice Holmes’ opinion in Silverthorne, supra. The majority footnote then distinguishes Silverthorne from Calandra and concludes: “In these circumstances, Silverthorne is certainly not controlling. To the extent that the Court’s broad dictum might be construed to suggest a different result in the present case, we note that it has been substantially undermined by later cases. See Parts III and IV of this opinion.” 414 U.S. 353, 94 S.Ct. 622.

Thus the majority opinion in Calandra bears out Professor Oaks’ full discussion of the trend of the Supreme Court’s decisions beginning: “When the Supreme Court has had to make decisions on the scope of the exclusionary rule, its opinion has usually stressed and its reasoning seems to have been dictated by the factual considerations of deterrence rather than the normative arguments of judicial integrity.” 37 Univ. of Chicago L.Rev. 669, 670.

The majority opinion in Calandra seems to bear out the sober views of Mr. Chief Justice Taft in Olmstead, supra, 277 U.S. 438, 468, 48 S.Ct. 564, 569, 72 L.Ed. 944:

“A standárd which would forbid the reception of evidence, if obtained by other than nice ethical conduct by government officials, would make society suffer and give criminals greater immunity than has been known heretofore. In the absence of controlling legislation by Congress, those who realize the difficulties in bringing offenders to justice may well deem it wise that the exclusion of evidence should be confined to cases where rights under the Constitution would be violated by admitting it.”

The majority opinion in Calandra is also supported by Mr. Justice Black’s constitutional philosophy as expressed in his concurring opinion in Plymouth Sedan v. Pennsylvania, 380 U.S. 693, 703, 85 S.Ct. 1246, 1252, 14 L.Ed.2d 170 (1965):

“For these reasons, I cannot agree that because we ourselves might believe the practice of obtaining evidence in that manner ‘shocks the conscience’ or is ‘shabby’ or ‘arbitrary,’ we are commanded or even authorized by the Constitution to prevent its use as evidence. That seems to me to be amending the Constitution, which is the business of the people, not interpreting it, which is the business of the courts.”

We have discussed Calandra at such length because, in the absence of an authoritative precedent expressly deciding whether or not the exclusionary rule applies to civil actions, Calandra seems to us clearly to point the way. Holding' that the exclusionary rule is inapplicable to grand jury proceedings where, of course, government is a party seems to establish a fortiori its inapplicability to civil actions between private parties, and especially so when, after the most thorough consideration, every reason asserted for the applicability of the rule to civil actions is held to be insufficient.

In Plymouth Sedan, supra, the Pennsylvania Supreme Court had held that the exclusionary rule applies only to criminal prosecutions and not to forfeitures, which it held to be civil in nature. The Supreme Court reversed the judgment of the State Court, but on the reasoning that, though the form of the proceeding was civil, the forfeiture was clearly a penalty for a criminal offense. Writing for the Court, Mr. Justice Goldberg quoted from and relied on the opinion in Boyd v. United States, 116 U.S. 616, 6 S.Ct. 524, 29 L.Ed. 746 (1886): “As this Court has acknowledged, ‘[t]he leading case on the subject of search and seizure is Boyd v. United States, 116 U.S. 616 [6 S.Ct. 524, 29 L.Ed. 746].’ Carroll v. United States, 267 U.S. 132, 147 [45 S.Ct. 280, 69 L.Ed. 543]. See Mapp v. Ohio, supra [367 U.S. 643] at 646-647 [81 S.Ct. 1684, 6 L.Ed.2d 1081].” 380 U.S. 696, 85 S.Ct. 1248. The rationale of Boyd itself seems to foreclose the applicability of the exclusionary rule to civil actions between private parties.

Other Supreme Court cases have tended strongly to indicate that the exclusionary rule does not apply to ordinary civil actions. Decisions of federal courts of appeals have tended in the same direction.

We hold that the Fourth and Fourteenth Amendments do not require .in civil cases that the exclusionary rule be extended to situations where private parties seek to introduce evidence obtained through unauthorized searches made by state officials.

II.

Admission of Evidence Obtained by Aetna’s Representatives.

It has long been settled that the Fourth Amendment protection against unlawful searches and seizures applies only to governmental action. We have found no other rule, constitutional, statutory or judicial, which would compel the rejection of logically relevant evidence obtained by a private person through an unauthorized search and seizure. We hold that the district court did not abuse its discretion in refusing to discipline or punish Daniel Leahy and his client, Aetna. A number of considerations may well have led Leahy to the honest but incorrect belief that his intrusion was authorized- — e. g., Honeycutt’s duty under the policy of insurance, his professed wish to cooperate fully with the investigation, and his attitude and conduct throughout the investigation of the fires. Indeed, following discovery of the intrusion, Honeycutt registered no indignation or objection. When Honeycutt discovered that Leahy and the photographer had entered his house without his permission, Leahy was outside and the photographer was still inside taking pictures. Honeycutt did not ask that the photographer come out but left him to his own volition. Clearly, there was no abuse of discretion on the part of the district court in admitting the evidence obtained by Aetna’s representatives.

III.

Court’s Instructions to Jury.

Honeycutt complains that the court erred in refusing to give any of three proposed jury instructions (Charges 141, 142 and 143) on presumption of innocence.

Charges 141 and 143 are defective because they place on a defend-

ant, who is trying to establish the arson defense, a burden of proof that is heavier than the predominant weight of the evidence test established in Illinois by Sundquist v. Hartford Mutual Fire Ins. Co., 371 111. 360, 21 N.E.2d 297 (1939). The judge did not err in failing to give the requested Charge 142. That instruction was probably suggested by Apple-man on Insurance § 13881, citing First National Bank v. Commercial Union Assur. Co., 33 Or. 43, 52 P. 1050 (1898). In that case the Oregon Supreme Court held that it was not error to give the charge. The Oregon Supreme Court in subsequent cases also held that it was not error to give a similar charge. So far as our research reveals, no Oregon court has been presented with the issue of whether such a requested charge must be given, and no Illinois court has ruled on the propriety of such a charge or any similar charge.

The three cited Oregon decisions are unusual in holding that rebuttable presumptions may be weighed against contrary evidence. Most jurisdictions have adopted the view developed in Thayer, Preliminary Observations on Evidence, Boston (1898) Ch. VIII and Ch. IX, and Wigmore on Evidence 3d ed. § 2491, that presumptions take the place of facts and, as a result, disappear when contrary evidence is presented. However, this area of the law is so confused that presumptions are sometimes treated as evidence, even in states that have adopted the Thayer-Wigmore rule. Illinois is typical.

The district court gave to the jury a number of other instructions requested by the plaintiff-appellant.

In our opinion, those instructions properly and adequately charged the jury on the point to which Honeycutt’s requested instructions directed attention. In any event, when the evidence and the given instructions are considered, it is clear, under Rule 61, Fed.R.Civ.P., and 28 U.S.C. § 2111, that the refusal to give any of the three requested instructions or any further instruction on the point does not warrant reversal of the judgment.

IV.

Newly Discovered Evidence.

Finally, Honeycutt asserts that the newly discovered restaurant check compels reversal or a new trial since it proves that Honeycutt could not have set the first fire. There are several answers to this contention. The check does not prove that he could not have set the "first fire, since it is so unclear from the record when the first fire was set that it is possible that Honeycutt could have set the fire before leaving for Stevens Point, Wisconsin. The evidence is merely cumulative. Honeycutt testified that he ate lunch in Stevens Point and spent the day there. The only evidence that he was not at Stevens Point was the testimony of Mr. Watruba, President of Weber Plastics. The stipulation entered into by counsel that Mr. Watruba had been mistaken in his testimony that he could not have had lunch with Honeycutt on the day in question practically destroyed the effect of Watruba’s contrary testimony. The newly discovered evidence, in all probability, would not have resulted in a different verdict. In short, the district court did not abuse its discretion when it denied Honeycutt’s motion for new trial.

The judgment is affirmed.

      . At the outset of the closing argument of plaintiff’s counsel, the court instructed the jury as follows:
      “This case is being submitted to you on the issue of liability only. By that I mean that we are not concerning ourselves in this trial at this time with any question of damages.
      “Mr. Honeycutt claims that his premises were covered by an insurance policy, that there was a fire and that he is entitled to be paid by the insurance company in a yet unascertained amount.
      “The insurance company says that while there was in fact a policy, they are not liable on the policy because they believe that Mr. Honeycutt either caused the fire or brought about the fire in some way violative of the terms of the policy.
      “That is all we are deciding here, should the insurance company be liable on this policy or had they made out a valid defense of arson, which indicates that they are not liable on the policy; we are not concerning ourselves at all in this trial with the question of damages.” (App. 278-279.)

      . Honeycutt claimed to have had lunch in Stevens Point, Wisconsin, with Weber Plastic’s president, who first disputed Honeycutt’s story and then later admitted that he might have had lunch with him on the day in question. A stipulation to the effect that he was in error in testifying that he could not have had lunch with Honeycutt was entered by the parties at trial.

      . Chapman v. California, 386 U.S. 18, 24, 87 S.Ct. 824, 17 L.Ed.2d 705 (1967); Bumper v. North Carolina, 391 U.S. 543, 550, 88 S.Ct. 1788, 20 L.Ed.2d 797 (1968).

      . See also, See v. City of Seattle, 387 U.S. 541, 87 S.Ct. 1737, 18 L.Ed.2d 943 (1967), and Air Pollution Variance Board v. Western Alfalfa Corp., 416 U.S. 861, 864, 94 S.Ct. 2114, 40 L.Ed.2d 607 (1974).

      . Our discussion of the exclusionary rule is limited to its nexus with the Fourth Amendment and does not extend to its application in cases which involve only the Fifth or Sixth Amendment. Professor Oaks has aptly commented that: “The United States Supreme Court currently enforces an exclusionary rule in state and federal criminal proceedings as to four major types of violations: searches and seizures that violate the fourth amendment, confessions obtained in violation of the fifth and sixth amendments, identification testimony obtained in violation of these amendments, and evidence obtained by methods so shocking that its use would violate the due process clause.” Studying the Exclusionary Rule in Search and Seizure, Dallin H. Oaks, 37 Univ. of Chicago L.Rev. 665 (Summer 1970).

      . See, e. g., Alderman v. United States, 394 U.S. 165, 174, 175, 89 S.Ct. 961, 22 L.Ed.2d 176 (1969); United States v. Blue, 384 U.S. 251, 255, 86 S.Ct. 1416, 16 L.Ed.2d 510 (1966); Walder v. United States, 347 U.S. 62, 65, 74 S.Ct. 354, 98 L.Ed. 503 (1954).

      . See e. g., N. L. R. B. v. South Dade Daily Press, 415 F.2d 360, 364 (9 Cir. 1969); United States v. Schipani, 435 F.2d 26, 28 (2 Cir. 1970); United States v. McSurely, 154 U.S. App.D.C. 141, 473 F.2d 1178, 1197-1201 (1972). For other cases, both federal and state, we refer to a comprehensive annotation on “Admissibility in Civil Case of Evidence Obtained by Unlawful Search and Seizure,” 5 A.L.R.3d 670, et seq.

      . Burdeau v. McDowell, 256 U.S. 465, 475, 41 S.Ct. 574, 65 L.Ed. 1048 (1921); accord, United States v. Calandra, 414 U.S. 338, 94 S.Ct. 613, 38 L.Ed.2d 561 (1974), Mr. Justice Brennan dissenting at 356, 94 S.Ct. at 624: “The commands of the Fourth Amendment are, of course, directed solely to public officials.” See also, Sackler v. Sackler, 15 N.Y.2d 40, 255 N.Y.S.2d 83, 203 N.E.2d 481, 5 A.L.R.3d 664.

      . Charge 141:
      “The defense of arson is affirmative in character upon which the insurer has the burden of proof. Any inference must be strong and almost inevitable. The presumption of innocence continues until the contrary is established.”
      Charge 143:
      “The presumption very properly is that all men are honest. Where arson is charged, it must affirmatively be proven by clear and convincing testimony. It cannot be established upon mere suspicion.”
      Charge 142:
      “There is a natural presumption of innocence where the act of arson is charged, and you have a right to consider the improbability that one will commit an act of criminal nature.” (App. 41.) ,

      . Wychoff v. Mutual of New York, 173 Or. 592, 147 P.2d 227 (1944); Ward v. Queen City Fire Ins. Co., 69 Or. 347, 138 P. 1067 (1914).

      . If a requested instruction directs attention to a point upon which the court should instruct the jury, technical defects in the request will not excuse the court’s failure to properly instruct the jury on that point. Celanese Corporation of America v. Vandalia Warehouse Corporation, 424 F.2d 1176, 1181 (7 Cir. 1970); Wright & Miller, Federal Practice & Procedure, Civil § 2552, notes 25 and 26.

      . See Flynn v. Vancil, 41 Ill.2d 236, 242 N.E.2d 237 (1968); Miller v. Pettengill, 392 Ill. 117, 63 N.E.2d 735 (1945); Nelson v. Stutz Chicago Factory Branch, 341 Ill. 387, 173 N.E. 394 (1930); Lohr v. Barkman Cartage Co., 335 Ill. 335, 167 N.E. 35 (1929); Osborne v. Osborne, 325 Ill. 229, 156 N.E. 306 (1927); Johnson v. Johnson, 187 Ill. 86, 58 N.E. 237 (1900); Graves v. Colwell, 90 Ill. 612 (1878); Lamkin v. Frizol, 7 Ill.App.3d 129, 287 N.E.2d 182 (1972); Botich v. Lorillard Company, 127 Ill.App.2d 232, 262 N.E.2d 38 (1970); McElroy v. Force, 75 Ill.App.2d 441, 220 N.E.2d 761 (1966); Hendrick v. Uptown Safe Deposit Co., 21 Ill.App.2d 515, 159 N.E.2d 58 (1959); Sheldon v. Brandstetter, 325 Ill.App. 595, 60 N.E.2d 576 (1945). The most complete discussion of the problem of the evidentiary weight of rebuttable presumptions is contained in an annotation at 5 A.L.R.3d 19-85. See also, McCormick on Evidence 2d ed., Ch. 36 §§ 342, et seq.

      . Including the following:
      “In considering the evidence in this case you are not required to set aside your own observation and experience in the affairs of life, but you have a right to consider all the evidence in the light of your own observation and experience.
      ******
      “I instruct you that the defendant is required to prove its case, its contention of arson by the greater weight or preponderance of the evidence. And if you believe from the evidence that it has not so proven its case or the evidence is evenly balanced so that you are unable to say on which side the greater weight of the evidence is, or if the greater weight of the evidence is in favor of the plaintiff, Mr. Honeycutt, then the verdict of the jury should be for the plaintiff.
      “When I say that a party has the burden of proof on any proposition or that a party must prove his contention by a preponderance of the evidence, or when I use the expression ‘if you find’ or ‘if you decide,’ I mean that you must be persuaded considering all the evidence in the case that the proposition on which either party has the burden of proof is more probably true than not true.
      ******
      “You are being told, and have been told, that the proof is upon the defendant insurance company to establish its contention of arson by the preponderance or greater weight of the evidence, that said fire was set with Harry Honeycutt’s prior knowledge or consent or that he procured the setting thereof. This alleged purposeful setting of the fire and burning must be proven either by direct evidence or by circumstantial evidence. The proof need not be by the direct evidence of persons who saw the occurrence sought to be proved.
      “The evidence offered and relied upon by the defendant to establish the claim that Harry Honeycutt procured the setting of the fire or that it was set with his prior knowledge or consent is of a kind and character known in the law, and called in the law, circumstantial evidence.” (App. 303, 304, 305.)


source: Caselaw Access Project

author: LAY, Circuit Judge.

license: Public Domain

text:
    Julia T. APTER, M.D., Plaintiff-Appellant, v. Elliot L. RICHARDSON, Secretary of the United States Department of Health, Education and Welfare, Defendant-Appellee.
    No. 73-2046.
    United States Court of Appeals, Seventh Circuit.
    Argued Sept. 30, 1974.
    Decided Jan. 31, 1975.

      Helen Hart Jones, Chicago, 111., for plaintiff-appellant.
    James R. Thompson, U. S. Atty., and Gary L. Starkman, Asst. U. S. Atty., Chicago, 111., for defendant-appellee.
    Before HASTINGS, Senior Circuit Judge, and CUMMINGS and LAY, Circuit Judges.

       The Honorable Donald P. Lay, United States Circuit Judge of the Eighth Circuit at Omaha, Nebraska, is sitting by designation.

   LAY, Circuit Judge.

Dr. Julia Apter, a professor of surgery at Rush-Presbyterian-St. Luke’s Medical Center, appeals the dismissal of her complaint challenging the denial of a medical training grant by the Department of Health, Education and Welfare (HEW) and the National Institutes of Health (NIH). The district court held that Dr. Apter was not the applicant for the grant, and therefore lacked standing to bring the action. Apter v. Richardson, 361 F.Supp. 1070 (N.D.Ill.1973). We vacate the dismissal and order reinstatement of plaintiff’s complaint.

In 1971 the Medical Center applied to the NIH for a medical training grant under the Püblic Health Service Act, 42 U.S.C. § 201 et seq., to train students in bio-materials research at three Chicago-area institutions: Northwestern University, Argonne National Laboratories, and the Medical Center. The application was signed by Dr. Mark Lepper, Executive Vice President of the Center, as the responsible institutional official and by Dr. Apter as the prospective Program Director of the training grant. Dr. Apter prepared the application and would have been responsible for administering the $580,000 grant over a five-year period. The NIH referred the application for screening to a committee of individuals employed by various private institutions. The complaint alleges that in December 1971, while the application was pending, Dr. Apter testified before a Senate subcommittee concerning alleged conflicts of interest of some of the NIH committee members, who are among the named defendants in the present case. A month later, in January 1972, the NIH committee recommended denial of the application. Official denial followed in April 1972. Subsequent requests for reconsideration were likewise denied. Dr. Apter then filed this suit, alleging inter alia that the grant was denied due to the fact that a woman (Dr. Apter) was designated as Program Director (sex discrimination), that she participated in feminist political activities, and in retaliation for her Senate testimony. The Center did not join the suit allegedly due to fear of adverse action by NIH on future grant applications.

The district court found that the Medical Center, as the applicant, was the real party in interest, that Dr. Apter lacked standing, and that she could not cure her own lack of standing by joining the Center as a party defendant.

The difficulty we have with approaching standing through the traditional real party in interest tests of F.R. Civ.P. 17(a) is that those tests focus on the source and “ownership” of the legal right asserted. In Association of Data Processing Service Organizations, Inc. v. Camp, 397 U.S. 150, 90 S.Ct. 827, 25 L.Ed.2d 184 (1970), the Supreme Court makes it clear that the “legal interest” test is no longer determinative of standing to raise federal constitutional issues. Id. at 153, 90 S.Ct. 827. Furthermore, it is settled that once a party is found to have standing to raise a constitutional point, that ruling disposes of any real party in interest objections as well. 6 C. Wright & A. Miller, Federal Practice and Procedure § 1552 at 694 (1971). See also United Fed. of Postal Clerks v. Watson, 133 U.S.App.D.C. 176, 409 F.2d 462, 469-470 (1969); Smith v. Board of Education, 365 F.2d 770, 777-778 (8th Cir. 1966).

To show standing under the Administrative Procedure Act, 5 U.S.C. § 702, a plaintiff must allege (a) an injury in fact and (b) “that the interest sought to be protected ... is arguably within the zone of interests to be protected or regulated by the statute or constitutional guarantee in question.” Association of Data Processing Service Organizations, Inc. v. Camp, supra, 397 U.S. at 153, 90 S.Ct. at 830. The purpose of this requirement is to ensure that the plaintiff has a sufficient personal stake in the outcome of the controversy to ensure vigorous presentation of the issues. See, e. g., Flast v. Cohen, 392 U.S. 83, 88 S.Ct. 1942, 20 L.Ed.2d 947 (1968); Baker v. Carr, 369 U.S. 186, 204, 82 S.Ct. 691, 7 L.Ed.2d 663 (1962); Friendship Medical Center, Ltd. v. Chicago Board of Health, 505 F.2d 1141 (7th Cir. 1974).

We conclude that Dr. Apter has alleged sufficient economic and non-economic harm to show injury in fact. The complaint alleges that her exercise of First Amendment rights to testify before a Senate subcommittee and to participate in feminist associations was among the reasons for denial of the grant, and that the denial chills those freedoms. Non-economic injuries have previously been recognized as a basis for standing. See, e. g., United States v. Students Challenging Regulatory Agency Procedures (SCRAP), 412 U.S. 669, 93 S.Ct. 2405, 37 L.Ed.2d 254 (1973) (aesthetic, environmental and recreational damage); Trafficante v. Metropolitan Life Ins. Co., 409 U.S. 205, 93 S.Ct. 364, 34 L.Ed.2d 415 (1972) (loss of social benefits of integrated community); Moose Lodge No. 107 v. Irvis, 407 U.S. 163, 92 S.Ct. 1965, 32 L.Ed.2d 627 (1972) (refusal to serve black on basis of race); Law Students Civil Rights Research Council v. Wadmond, 401 U.S. 154, 91 S.Ct. 720, 27 L.Ed.2d 749 (1971) (chilling effect on First Amendment rights of law students arising from “character check” requirements for admission to Bar of New York); Baker v. Carr, 369 U.S. 186, 82 S.Ct. 691, 7 L.Ed.2d 663 (1962) (unequal weighting of votes). Since plaintiff Apter alleges that the agency action has been carried out with the actual purpose and effect of injuring her, her complaint is not merely of an “abstract injury” common to all who favor enforcement of the law, nor does it raise only a possible but unlikely future injury. See Schlesinger v. Reservists Comm. to Stop the War, 418 U.S. 208, 94 S.Ct. 2925, 41 L.Ed.2d 706 (1974); O’Shea v. Littleton, 414 U.S. 488, 94 S.Ct. 669, 38 L.Ed.2d 674 (1974); Laird v. Tatum, 408 U.S. 1, 92 S.Ct. 2318, 33 L.Ed.2d 154 (1972); Ex parte Levitt, 302 U.S. 633, 58 S.Ct. 1, 82 L.Ed. 493 (1938); Frothingham v. Mellon, 262 U.S. 447, 43 S.Ct. 597, 67 L.Ed. 1078 (1923).

In addition to these invasions of plaintiff’s First and Fifth Amendment freedoms, Dr. Apter alleges economic injury as well. In an affidavit filed in the district court, she states that she spent 800 hours in preparing the application, and that she has been deprived of economic and professional benefits which she anticipated in return for her preparation time. In addition to any salary she would have received as Program Director, she alleges she will be denied professional prestige and the opportunity to associate with and train students under training grants in a significant area of medical research. These are cognizable injuries, which also lend more than an abstract interest to Dr. Apter’s personal stake in the suit.

Preparation time devoted to a project in expectation of economic benefits has been held a sufficient “personal stake” in Park View Heights Corp. v. City of Black Jack, 467 F.2d 1208 (8th Cir. 1972). Employers have been permitted to challenge the denial of alien employment certificates to persons they wished to hire, since the employer as well as the prospective employee sustained “injury in fact.” First Girl, Inc. v. Regional Manpower Admin., 499 F.2d 122, 123 (7th Cir. 1974); Secretary of Labor v. Farino, 490 F.2d 885, 889 (7th Cir. 1973). See also Investment Co. Institute v. Camp, 401 U.S. 617, 91 S.Ct. 1091, 28 L.Ed.2d 367 (1971); Arnold Tours, Inc. v. Camp, 400 U.S. 45, 91 S.Ct. 158, 27 L.Ed.2d 179 (1970); Association of Data Processing Service Organizations, Inc. v. Camp, supra.

The fact that the alleged wrong may also have injured third parties does not deprive plaintiff of standing so long as she as well is injured in fact. Sierra Club v. Morton, 405 U.S. 727, 736-738, 92 S.Ct. 1361, 31 L.Ed.2d 636 (1972); Cotovsky-Kaplan Physical Therapy Ass’n, Ltd. v. United States, 507 F.2d 1363 (7th Cir. 1975); Friendship Medical Center, Ltd. v. Chicago Board of Health, supra. It was on this basis that a white tenant was held to have standing to challenge his landlord’s refusal to rent to blacks. The white tenant suffered injury in the loss of the social benefits of an integrated community and through the social stigma of life in a “white ghetto.” Trafficante v. Metropolitan Life Ins. Co., supra. See also Albert, Standing to Challenge Administrative Action: An Inadequate Surrogate for Claim for Relief, 83 Yale L.J. 425, 465-67 (1974); Note, Standing to Assert Constitutional Jus Tertii, 88 Harv.L.Rev. 423, 429 n. 36 (1974). Cf. First Girl, Inc. v. Regional Manpower Admin., supra; Secretary of Labor v. Farino, supra. Thus, we find that Apter has alleged injury in fact.

Second, we find that Dr. Apter meets the so-called “zone of interests” test. Clearly, her rights to testify before a Senate subcommittee and to participate in feminist political groups without punitive denial of government benefits are protected by the Constitution and on these facts, by the Public Health Service Act as well. The Act provides that the Surgeon General must

encourage . . . and render assistance to scientific institutions, and scientists in the conduct of, and promote the coordination of, research, investigations . . . and studies relating to the causes, diagnosis, treatment, control, and prevention of physical and mental diseases and impairments of man .... 42 U.S.C. § 241.

As Judge Stevens recently observed in an analogous case involving standing:

The test is not whether these plaintiffs are regulated by the statute but whether the interests asserted by them arguably fall within the zone of interests so regulated. (Emphasis added).

Cotovsky-Kaplan Physical Therapy Ass’n, Ltd. v. United States, supra, 507 F.2d at 1366.

It is clearly arguable that the legislative purpose underlying the Act can be fulfilled only by protecting the interest of medical research personnel and medical faculties in fair and objective distribution of government grants. Cf. Association of Data Processing Service Organizations, Inc. v. Camp, supra; Investment Co. Institute v. Camp, supra; Arnold Tours, Inc. v. Camp, supra.

In finding standing, we of course do not in any way express judgment upon the possible merits of plaintiff’s allegations. We do note that the Public Health Service Act does confer broad discretion in the funding of training programs. See 42 U.S.C. §§ 241, 289c. Cf. Kletschka v. Driver, 411 F.2d 436 (2d Cir. 1969). This consideration leads to the conclusion that the medical merits of NIH decisions on training grants may be committed to the unreviewable discretion of the agency. However, that does not mean that NIH actions wholly escape judicial scrutiny. Where it is alleged that the agéncy has transgressed a constitutional guarantee or violated an express statutory or procedural directive, otherwise non-reviewable agency action should be examined to the extent necessary to determine the merits of the allegation. See, e. g., Johnson v. Robison, 415 U.S. 361, 94 S.Ct. 1160, 39 L.Ed.2d 389 (1974) (constitutional questions); Brotherhood of Railway & Steamship Clerks v. Association for the Benefit of Non-Contract Employees, 380 U.S. 650, 85 S.Ct. 1192, 14 L.Ed.2d 133 (1965) (statutory duty); Kletschka v. Driver, supra (statutory duty); Cappadora v. Celebrezze, 356 F.2d 1, 6 (2d Cir. 1966) (administrative regulations).

The judgment of the district court is reversed and remanded for further proceedings.

      . Although there are ambiguous references in Dr. Apter’s complaint to the effect that she rather than the Medical Center was “the applicant,” we find that the district court did not err in treating the complaint as if the application was merely filed by Dr. Apter on behalf of the Medical Center. However, we do not think this determination is helpful in resolving the question of standing in this case.

      . The NIH, a federal agency established under the Public Health Service Act, 42 U.S.C. § 201 et seq., is authorized to make “grants-in-aid to universities, hospitals, . and other public or private institutions, and to individuals ” to encourage research in human medicine. 42 U.S.C. § 241(c).

      . The complaint basically alleges that:
      (1) The Public Health Service Act and regulations thereunder (at least the sections relevant to training grants) violate the Fifth Amendment by undue delegation without adequate standards.
      (2) The NIH decision-making process fails to conform to requirements of the Administrative Procedure Act (APA) that rules and standards be published, that intra-agency review be standardized, and that decision-makers by subject to disqualification for personal bias.
      (3) The NIH committee members violate federal conflict of interest regulations and NIH regulations.
      (4) The instant application was denied on medically irrelevant and constitutionally improper bases, to-wit, personal bias against Dr. Apter, the prospective Program Director, because of her Senate testimony, her women’s rights activities and her sex.

      . After the district court first ruled (361 F.Supp. 1070), the plaintiff filed a motion for reconsideration and attached an affidavit supporting the allegations of her complaint. The court held another hearing and entered a further memorandum opinion (unpublished) reaffirming the original dismissal.

      . The Second Circuit has held that Veterans Administration research grant decisions were subject only to very limited review. Kletschka v. Driver, 411 F.2d 436 (2d Cir. 1969). The court noted the burden that general review would place upon the court, requiring digestion of a mass of technical data before it could decide that one application was so superior that it was an abuse of discretion to reject it in favor of others. A further problem noted was the impracticability of reviewing the agency’s judgment of the relative personal competence of applicants. 411 F.2d at 443. Those problems would of course arise here, too, if NIH decisions were reviewable on a substantial evidence or abuse of discretion standard. We are mindful as well that judicial review of training grant decisions might place a heavy burden of litigation and delay upon the agency and its grantees as well.


text:
    James B. CRISMON, Appellant, v. UNITED STATES of America, Appellee.
    No. 74-1332.
    United States Court of Appeals, Eighth Circuit.
    Submitted Oct. 16, 1974.
    Decided Feb. 10, 1975.
    Bernard Passer, Kansas City, Mo., for appellant.

      Wesley Wedemeyer, Asst. U. S. Atty., St. Louis, Mo., for appellee.
    Before GIBSON, Chief Judge, and LAY and STEPHENSON, Circuit Judges.
   LAY, Circuit Judge.

Petitioner sought post-conviction relief under 28 U.S.C. § 2255 from his conviction on five counts of misapplying bank funds (18 U.S.C. § 656), two counts of fraud (18 U.S.C. § 1005), and one count of mail fraud (18 U.S.C. § 1341). On direct appeal his conviction was affirmed without opinion. United States v. Crismon, No. 71-1493 (8th Cir. filed March 20, 1972), cert. denied, 409 U.S. 890, 93 S.Ct. 104, 34 L.Ed.2d 147 (1972). Petitioner received two hearings before the district court on his § 2255 petition and was denied relief. This appeal followed.

Petitioner asserts four grounds for relief: (1) the admission of certain testimony of a witness, June Saltz, in the original trial, (2) the alleged use of perjured testimony by the government, (3) the allegedly ineffective assistance of his retained counsel, and (4) that the charges against him were politically motivated. Upon a thorough review of the record we reject each of these claims.

First, it is fundamental that error in the admission of testimony at trial is an improper ground upon which to base a claim for' post-conviction relief in a proceeding under § 2255. See Houser v. United States, 508 F.2d 509 (8th Cir. 1974), and cases cited id. at n. 38.

Second, although the knowing use of perjured testimony is cognizable under § 2255, Houser, supra, the burden remains on the petitioner to prove the government’s knowledge at the time of its use. See Hallman v. United States, 490 F.2d 1088, 1090 (8th Cir. 1973); United States v. Hester, 489 F.2d 48, 51 (8th Cir. 1973); Sykes v. United States, 341 F.2d 104 (8th Cir. 1965); Holt v. United States, 303 F.2d 791, 794 (8th Cir. 1962), cert. denied, 372 U.S. 970, 83 S.Ct. 1095, 10 L.Ed.2d 132 (1963); Taylor v. United States, 229 F.2d 826, 832—33 (8th Cir.), cert. denied, 351 U.S. 986, 76 S.Ct. 1055, 100 L.Ed. 1500 (1956). The district court considered this claim at length and found there were apparent inconsequential inaccuracies in the testimony of John Williams but that they were developed on cross-examination and in no manner rose to the level of perjury. Our examination of the claim indicates its frivolous nature.

Third, petitioner asserts that he received ineffective assistance from his retained counsel. He alleges (1) that his counsel failed to effectively investigate the case against him, (2) that he failed to call his son, Larry, as a witness, and (3) that his counsel considered the case indefensible and stated as much to the court. The district court carefully considered these allegations and found the petitioner had received effective assistance of counsel.

There is nothing within the present record which persuades us that the district court erred in this finding. Petitioner carries a heavy burden to demonstrate the lack of effective assistance of counsel. McQueen v. Swenson, 498 F.2d 207 (8th Cir. 1974); Garton v. Swenson, 497 F.2d 1137 (8th Cir. 1974). The fact that an acquittal was not obtained is not relevant to the question of whether counsel was effective or not. See Johnson v. United States, 506 F.2d 640 (8th Cir. 1974). The record indicates petitioner received a fair trial and that his trial counsel exercised the customary skill and diligence of a reasonably competent criminal attorney in the assistance he rendered. There exists no magic formula for reviewing claims of ineffective assistance of counsel. Once the claim is raised judges must still make a legal judgment as to whether, in face of the allegations made and the proof adduced, the defendant was materially prejudiced in the defense of his case by the actions or inactions of his counsel. We find no evidence to sustain the charge here.

Finally, defendant raises here for the first time the claim that his prosecution was politically motivated. Although this claim was not raised in the district court, we have considered it and we find it spurious.

Judgment affirmed.

      . As the district court found, this precise claim was raised and disposed of on direct appeal. See Brief for Appellant at 9, United States v. Crismon, No. 71-1493 (8th Cir. 1971).

      . We take no occasion here to discuss whether there -exists a different constitutional standard of review where counsel is retained rather than appointed. Cf. Fitzgerald v. Estelle, 505 F.2d 1334 (5th Cir. 1974) (en banc). This court has always assumed the standard of review to be the same. Cf. Garton v. Swenson, 497 F.2d 1137, 1139 n. 4 (8th Cir. 1974); Brown v. Swenson, 487 F.2d 1236 (8th Cir. 1973), cert. denied, 416 U.S. 944, 94 S.Ct. 1952, 40 L.Ed.2d 296 (1974); Cross v. United States, 392 F.2d 360 (8th Cir. 1968).

      . The trial court in its memorandum opinion said:
      Next we consider the contention that petitioner received ineffective assistance from his retained counsel, Charles Shaw. Petitioner complains that Shaw devoted an insufficient amount of time in consulting with him and in investigating the merits of the charges, arguing that more intensive investigation would have developed more exculpating evidence. He also second-guesses Shaw’s trial strategy and tactics. We find no substance to this point.
      Shaw has specialized for many years in the defense of persons charged with crime. He manifested at the hearing his sincere disappointment, both in failing to persuade the jury that petitioner was innocent, as well as in his lack of success in his subsequent representation of petitioner (post-trial motions, appeal to the Court of Appeals, certiorari to the Supreme Court). He and his office associates devoted hundreds of hours to the preparation of the defense and in the investigation of pertinent matters, of which some 30 or 40 hours prior to the 9-day trial were spent by Shaw in conferring directly with petitioner, to say nothing of the additional time spent for this purpose during the trial itself. He skillfully examined and cross-examined the witnesses. At no time did petitioner indicate that he felt Shaw’s defense to be inadequate until this proceeding was instituted. On the contrary, he expressed gratification with Shaw’s work, and this is corroborated by the fact that Shaw handled the appellate work.
      Aside from his general complaint that Shaw did not sufficiently investigate the case, petitioner attacks Shaw in two specific instances. One relates to Shaw’s decision (concurred in by petitioner and petitioner’s wife) not to call Larry Crismon, petitioner’s son, as a witness. Larry was involved in two counts, VI and VIII.
      The decision respecting Larry was a matter of trial strategy and tactics. It appeared to Shaw that Larry, a very volatile and emotionally unstable individual, would have unintentionally strengthened the government’s case, particularly on Count VIII. . . . Petitioner now argues that because Shaw had also represented Larry in his legal problems, there was a conflict of interest. We do not agree. Petitioner further contends that in causing Larry to stay away from the court-room, Shaw might have been motivated by a desire to prevent Larry from incriminating himself to the detriment of petitioner. We find no basis whatever for this serious reflection upon Shaw’s integrity.
      As noted by the Court of Appeals in Robinson v. United States, 8 Cir., 448 F.2d 1255, 1256, “Hindsight can always be utilized by those not in the fray so as to cast doubt on trial tactics a lawyer has used.” Even poor judgment as to strategy “cannot support a belated claim of ineffectual counsel.”
      Finally, petitioner seizes upon the tongue-in-cheek remark of Shaw (out of the hearing of the jury at the start of the trial when the government dismissed Count V), to the effect that Count V was the only one to which he had a defense. The comment was jocular and recognized as such when made by both the Court and government counsel. This statement in no wise convicts Shaw of inadequate representation of petitioner. Rather, it simply demonstrates that joking remarks should be made off the record, if at all.
      In our judgment, there is no reasonable basis for the charge that Shaw failed in his professional duty to petitioner.

      . See cases collected in Garton v. Swenson, 497 F.2d 1137 (8th Cir. 1974).


author: KOELSCH, Circuit Judge:

text:
    CIRCUIT-STIK, INC., a California Corporation, Plaintiff-Appellant, v. BISHOP GRAPHICS, INC., a California Corporation, and International Rectifier Corporation, a California Corporation, Defendants-Appellees.
    No. 72-2876.
    United States Court of Appeals, Ninth Circuit.
    Feb. 3, 1975.
    Keith D. Beecher (argued), Los Angeles, Cal., for plaintiff-appellant.
    Allen M. Shapiro (argued), Sherman Oaks, Cal., for defendants-appellees.
    Before VAN OOSTERHOUT, KOELSCH and HUFSTEDLER, Circuit Judges.

       The Honorable Martin D. Van Oosterhout, United States Circuit Judge for the Eighth Circuit, sitting by designation.

   OPINION

KOELSCH, Circuit Judge:

Circuit-Stik, Inc., appeals from an adverse judgment of the district court declaring all nine claims of its United States Patent No. 3538389 invalid on grounds of anticipation and obviousness. We conclude that the court’s factual determinations are supported by the evidence and that its conclusion is correct.

The patent deals with electronic circuit boards — more particularly with the grouping and attachment of “sub-elements” (i. e., component units) of an electrical circuit to the surface or board supporting the whole. As suggested by plaintiff’s corporate name “Circuit-Stik,” the component sub-elements are capable of being “adhesively affixed” to such boards.

The grouping together initially of parts into sub-elements prior to integrating them into the whole is not new in the art. Although it may be true that prior art sub-elements were attached to the entire circuit by plugs, while those covered in the claims are attached by adhesive, and that the use of adhesive makes it somewhat easier to design circuits, these differences are not of such substance as to constitute patentable invention.

Nor can we conclude that the trier of fact erred in concluding that the application of a “pressure sensitive” adhesive to the surface of the sub-element which contacts the circuit board or the backing of the exposed surface of the pressure sensitive adhesive with a strip of “release paper” to protect the adhesive from engaging other objects prior to attachment of the sub-element to the circuit board is beyond the ken of the proverbial ordinary mechanic skilled in the art.

Affirmed.


author: STEPHENSON, Circuit Judge.

text:
    ALLEN HOMES, INC., Appellant and Cross-Appellee, v. Jack H. WEERSING and Elk River Homes, Inc., Appellees and Cross-Appellants.
    Nos. 74-1325, 74-1353.
    United States Court of Appeals, Eighth Circuit.
    Submitted Oct. 17, 1974.
    Decided Feb. 7, 1975.
    Certiorari Denied June 2, 1975.
    See 95 S.Ct. 2395.
    Anthony Zummer, Chicago, 111., for appellant.
    William S. Dorman, Tulsa, Okl., for appellees.
    Before GIBSON, Chief Judge, and LAY and STEPHENSON, Circuit Judges.
   STEPHENSON, Circuit Judge.

These cases involve a three count complaint by plaintiff, Allen Homes, for federal trademark infringement, 15 U.S.C. §§ 1051 — 1127; federal unfair competition, 15 U.S.C. § 1125(a); and common law trademark infringement. Defendants, Jack H. Weersing and Elk River Homes (Elk River), counterclaimed for false and fraudulent trademark registration. The trial court held that Elk River had not infringed upon Allen Homes’ trademark but that Elk River had not carried its burden on the counterclaim. We affirm.

The case was presented to the court largely on stipulated and undisputed facts. We will recount sufficient facts to dispose of the issues.

Appellant, Allen Homes, began using the trademark FOUR SEASONS on its mobile homes on May 16, 1969. It manufactured the homes in its Olympia, Washington plant and sold them in the states of Washington, Oregon, Alaska, Idaho and Montana (northwestern states). An Allen Homes plant was placed under construction in Junction City, Kansas on June 5, 1969. The record shows that Allen Homes had previously, on May 1, 1969, announced its intention to market FOUR SEASONS mobile homes in Kansas, Nebraska, Iowa, Missouri, Colorado and Arkansas (midwestern states). The announcement appeared in the local Junction City, Kansas newspaper.

The stipulations reveal that Elk River, which sold its first FOUR SEASONS mobile home in Missouri on February 18, 1970, was the first user of the FOUR SEASONS mark in the midwestern states.

On June 2, 1970 Allen Homes sent to' Elk River a letter informing Elk River of Allen’s prior use of the FOUR SEASONS mark in the northwestern states. The trial court found that this letter was the first notice which Elk River received of any prior use of the FOUR SEASONS mark.

In July of 1970 Allen Homes applied to the United States Patent Office for registration of the FOUR SEASONS mark. Registration became final in December of 1971. Allen Homes notified Elk River of the registration on January 10, 1972.

Elk River continued to use the FOUR SEASONS mark until February 15, 1972 when it discontinued using the mark and mailed its stock of FOUR SEASONS decals to Allen Homes’ counsel. This lawsuit seeking injunctive relief as well as punitive and exemplary damages was filed on April 3, 1972.

I. Allen Homes’ Infringement Claims.

The main thrust of Allen Homes’ argument is that they were the first users of the FOUR SEASONS mark on mobile homes and that they were therefore entitled to continue to expand their market in FOUR SEASONS mobile homes unhampered by later market entries of others using the same name. They cite the Trade-Mark Cases, 100 U.S. 82, 25 L.Ed. 550 (1879).

The trial court relied on the Supreme Court cases of United Drug Co. v. Rectanus Co., 248 U.S. 90, 39 S.Ct. 48, 63 L.Ed. 141 (1918), and Hanover Milling Co. v. Metcalf, 240 U.S. 403, 36 S.Ct. 357, 60 L.Ed. 713 (1916). The particular language we find relevant comes from Hanover where the Court stated:

In the ordinary case of parties competing under the same mark in the same market, it is correct to say that prior appropriation settles the question. But where two parties independently are employing the same mark upon goods of the same class, but in separate markets wholly remote the one from the other, the question of prior appropriation is legally insignificant, unless at least it appear that the second adopter has selected the mark with some design inimical to the inter-, ests of the first user, such as to take the benefit of the reputation of his goods, to forestall the extension of his trade, or the like.

Hanover, supra, 240 U.S. at 415; see also Gold Master Corp. v. Miller, 380 F.2d 128, 130 (2d Cir. 1967).

Premised upon Hanover and Rec-ta nus the trial court properly decided that Elk River, having entered the mid-western states to market its mobile homes without prior knowledge of Allen Homes’ use of the trademark on mobile homes in the northwestern states, was not liable to Allen Homes for trademark infringement. The trial court’s factual findings are supported by the record, and no error of law appears.

Allen Homes urges that the following factors are sufficient to support its claim: (1) its status as first user, (2) its announced intention to market FOUR SEASONS mobile homes in the midwestern states, (3) its national advertising,2 3 and (4) the commencement of erection of its plant at Junction City, Kansas. We disagree.

Trademark rights are conferred by use of the mark. Rectanus, supra, 248 U.S. at 97, 39 S.Ct. 48; Hanover, supra, 240 U.S. at 413, 36 S.Ct. 357; Steer Inn Systems, Inc. v. Laughner’s Drive-In, Inc., 405 F.2d 1401, 1402 (C.C.P.A.1969); Modular Cinemas of America, Inc. v. Mini Cinemas Corp., 348 F.Supp. 578, 582 (D.N.Y.1972). Sweet Sixteen Co. v. Sweet “16” Shop, 15 F.2d 920 (8th Cir. 1926), is not to the contrary. As the trial court noted, “Unlike this case, the defendants in Sweet Sixteen had actual notice of plaintiff’s prior adoption and use of the [trademark].”

II. Elk River’s Counterclaim.

Elk River has counterclaimed for money damages arguing that Allen Homes’ trademark registration was fraudulent. See Walworth Co. v. Moore Drop Forging Co., 19 F.2d 496 (5th Cir. 1927); Bart Schwartz Int’l Textiles, Ltd. v. F.T.C., 289 F.2d 665, 48 C.C.P.A. 933 (1961).

An Allen Homes corporate officer made a supporting affidavit to the patent office at the time application was made for registration. The affidavit stated that affiant knew of no other person, firm, corporation or association that had the “right to use in commerce said mark on the same goods, either in the identical form or in such near resemblance thereto as might be calculated to deceive.” Compare Schwinn Bicycle Co. v. Murray Manufacturing Co., 339 F.Supp. 973 (D.Tenn.1971); Nissen Trampoline Co. v. American Trampoline Co., 193 F.Supp. 745 (S.D.Iowa 1961).

Elk River contends that because Allen Homes proceeded to obtain trademark registration for “trailers” (Class 19), knowing full well that a Wisconsin company had registered the FOUR' SEASONS mark for “factory manufactured buildings and homes” (Class 12) and knowing further that Elk River was using the FOUR SEASONS mark in Missouri, fraud is clearly shown. The trial court regarded the issue as a close one but concluded that fraudulent registration had not been established.

We have carefully reviewed the record. Allen Homes had established first use in the northwestern states. They claimed a right superior to that of Elk River in the midwestern states. The prior knowledge of registration in a separate classification by the Wisconsin company certainly does not demonstrate a clear intent to defraud.

Under all the circumstances we find no clear and convincing evidence that Allen Homes committed fraud.

Affirmed.

      . The United States District Court for the Western District of Missouri, Honorable John W. Oliver presiding.

      . The record indicates that Elk River informally learned of Allen Homes’ prior use “a few days” before receipt of the letter.

      . The trial court mentioned this situation and was disposed to comment: “We have sometimes wondered during the processing of this case why plaintiff felt it necessary to seek further relief.”

      . There is testimony in the record that Allen Homes ran a FOUR SEASONS advertisement in a national trailer dealers magazine.


author: PER CURIAM: RONEY, Circuit Judge RIVES, Circuit Judge

text:
    Limmie WEST, III, Plaintiff-Appellee, v. STATE OF LOUISIANA, Defendant-Appellant.
    No. 72-1338.
    United States Court of Appeals, Fifth Circuit.
    March 24, 1975.
    Wm. J. Guste, Jr., Atty. Gen. of La., Baton Rouge, La., Jim Garrison, Dist. Atty., New Orleans, La., Barbara Rutledge, Asst. Atty. Gen., Louise Korns, Shirley G. Wimberly, Jr., Asst. Dist. Attys., New Orleans, La., for defendant-appellant.
    Limmie West, III, pro se.
    George M. Leppert, New Orleans, La. (Court appointed), for plaintiff-appellee.
    Before BROWN, Chief Judge, and RIVES, WISDOM, GEWIN, BELL, THORNBERRY, COLEMAN, GOLDBERG, AINSWORTH, GODBOLD, DYER, SIMPSON, MORGAN, CLARK, RONEY and GEE, Circuit Judges.
   PER CURIAM:

We took this case and Fitzgerald v. Estelle, 5 Cir. 1974, 505 F.2d 1334 en banc “to resolve the constitutional standards which govern adjudication of claims of ineffectual assistance of privately retained counsel.” Id. at 1335.

Having explicated the standards in Fitzgerald, we vacate Part III and adhere to and affirm Parts I, II and IV of the panel opinion of this Court. West v. State of Louisiana, 5 Cir. 1973, 478 F.2d 1026.

The judgment of the district court is vacated and the case is remanded for reconsideration of the alleged ineffective assistance of privately retained counsel in the light of Fitzgerald.

RONEY, Circuit Judge

(specially concurring):

I concur in the en banc vacation and remand of the district court’s judgment for reconsideration in the light of Fitzgerald v. Estelle, 505 F.2d 1334 (5th Cir. 1974) (en banc). I do not concur in affirmance of Part II of the panel opinion, West v. Louisiana, 478 F.2d 1026 (5th Cir. 1973), which indicates that the district court may decide this case without an evidentiary hearing. As indicated in my dissent to the panel opinion, 478 F.2d at pp. 1035-1037, I would call for a full development of the facts and at the very least, a review of the state trial record by the district court. I doubt that the district court can give adequate reconsideration to this case under the Fitzgerald principles without an evidentiary hearing. I would not indicate otherwise by affirmance of Part II of the panel opinion. I agree with the en bane majority that Parts I and IV are correct as written in the panel opinion.

RIVES, Circuit Judge

(concurring in part and dissenting in part):

I concur in the affirmance of Parts I, II and IV of the panel opinion, but respectfully dissent both from the vacation of Part III of the panel opinion and from the vacation of the judgment of the District Court.


author: PER CURIAM:

text:
    Aubrey E. DOUGLAS v. The UNITED STATES.
    No. 197-70.
    United States Court of Claims.
    Jan. 22, 1975.
    Robert B. Russell, Boston, Mass., attorney of record, for plaintiff; Russell & Nields, Boston, Mass., of counsel.
    Donald E. Townsend, Washington, D. C., with whom was Asst. Atty. Gen., Carla A. Hills, for defendant.
    Before DURFEE, Senior Judge, and KASHIWA and KUNZIG, Judges.
   OPINION

PER CURIAM:

In this suit under 28 U.S.C. § 1498, plaintiff seeks reasonable and entire compensation for the alleged unauthorized use by defendant of an invention described and claimed in his U.S. Patent No. 2,601,104, entitled “Jet Propulsion and Control Means Therefor,” issued June 17, 1952. Jurisdiction is acknowledged and ownership of the patent is uncontested.

The suit involves jet-propelled airplanes. Accused to infringe are six British-made airplanes (called the Kestrel) and 11 replacement engines (called the Pegasus) that were brought to this country by defendant in late 1965. In addition, plaintiff alleges infringement by reason of the production version of the Kestrel (renamed the Harrier) being demonstrated by the British in this country in May, 1969. Defendant asserts invalidity of the patent on the grounds of lack of utility under 35 U.S.C. § 101, insufficient disclosure under 35 U.S.C. § 112 and obviousness under 35 U.S.C. § 103. In addition, defendant urges the defenses of noninfringement and absence of liability by reason of “experimental use.” During pretrial proceedings, claims 1 — 3, 5 and 8 were alleged to be infringed. However, plaintiff’s brief and proposed findings are restricted to claim 1. Accordingly, only that claim will be considered herein.

For the reasons stated hereinafter, we find that claim 1 is invalid for reasons of obviousness. It is not necessary for this .court to rule on the defenses of noninfringement and absence of liability by reason of “experimental use” urged by the defendant.

Jet engines employ a jet pipe or tube through which hot combustion gases are directed to produce the thrust required to propel an airplane. Normally, the jet pipe opens rearwardly of the plane so that the propelling gases issue from the jet pipe in a direction opposite to the line of forward flight of the airplane. This suit is concerned with the manner in which the thrust generated by a jet engine may be used, in addition to propelling the aircraft in the normal forward direction, to alter the conventional mode of takeoff and landing. Reference will be made to VTOL, STOL and V/STOL. The term VTOL indicates “vertical takeoff and landing” and refers to the takeoff or landing of a fixed-wing aircraft by only vertical movement of the aircraft. The term STOL indicates “short takeoff and landing” and refers to a fixed-wing aircraft that either takes off or lands with only a short horizontal run of the aircraft. The term V/STOL indicates “vertical and/or short takeoff and landing” and refers to an aircraft that is capable of operating in both the VTOL and STOL modes. The term “vectored thrust” will be used herein. That term refers to the directional control of the thrust generated by the jet engine whereby the thrust may be directed to a desired angle other than directly rearward of the plane.

The Douglas patent proposes a mechanism for selectively diverting the combustion gases of a jet engine to a direction other than that of their normal flow so that the thrust may be utilized for braking the airplane, or for assisting takeoff or landing, or for control purposes. Three embodiments are disclosed in the patent. The first (Figs. 1 and 2) employs a baffle for diverting at least a portion of the combustion gases from the jet tube to a pivotally mounted conduit. By pivoting the conduit, the thrust of the engine may be directed toward the ground and either forward (to brake the airplane) or backward (for increasing the •lift of the plane). The second embodiment (Figs. 3-5) employs, at the exit end of the jet tube, a number of arcuate members nested together and supported on a common pivot to form a curved conduit for directionally controlling the flow of combustion gases for the same purposes as the embodiment of Fig. 1. The third embodiment (Figs. 6 and 7) has the engine mounted transversely of the aircraft with a pivotally mounted L-shaped conduit for directing the thrust of the engine in the desired direction.

In all three embodiments, directional control of the thrust is achieved by some form of a pivotally mounted conduit movable in a plane substantially perpendicular to the wing. By, for example, pivoting the conduit of any one of the three embodiments downwardly and rearwardly, the thrust of the engine produces two rectilinear components, one acting horizontally to move the plane forward and the other acting vertically to provide lift for the plane. This is the concept of “vectored thrust,” i.e., the thrust generated by the engine has both magnitude and direction and is resolvable into rectilinear components.

The advantages of vectoring the thrust, as stated in the patent and during the prosecution of the application, are several. By directing the thrust downward and rearward, the forward speed of the airplane may be decreased while the engine is maintained at full power. This has particular advantages during landing in that the increased lift generated by the downward component of the thrust decreases both the plane’s landing speed and the length of the landing run. Moreover, by maintaining the engine at full power, it is immediately available in the event of an emergency. During takeoff, the downward component of thrust decreases the speed at which the plane becomes airborne and thus decreases the length of the takeoff run. In short, and as Douglas stated it in his patent, “a slow running aircraft and a fast running engine is thus made possible.”

The sufficiency and operability of the Douglas disclosure

At the outset, defendant argues that the patent is invalid by reason of an inadequate disclosure under 35 U.S.C. § 112. Defendant’s attack is based primarily on the absence of any disclosure in the patent regarding the many technological problems encountered and solved by the British company in producing the accused Kestrel and Harrier airplanes. However, a patent specification is not required to be a production blueprint for constructing, a jet airplane. Trio Process Corp. v. L. Goldstein’s Sons, Inc., 461 F.2d 66, 74 (3d Cir. 1972), cert. denied, 409 U.S. 997, 93 S.Ct. 319, 34 L.Ed.2d 262 (1972). Nor can a patentee be expected to foresee every technological problem that may be encountered in adapting his idea to a particular use. Some experimentation and exercise of judgment is to be expected. Binks Manufacturing Co. v. Ransburg Electro-Coating Corp., 281 F.2d 252, 257 (7th Cir. 1960), appeal dismissed, 366 U.S. 211, 81 S.Ct. 1091, 6 L.Ed.2d 239 (1961); International Nickel Co. v. United States, 175 U.S.P.Q. 209, 214-15 (Trial Div.Ct.Cl. 1972). Giving due regard to the subject matter involved and the circumstances existing in 1945 when the application was filed, Bowser, Inc. v. United States, 388 F.2d 346, 181 Ct.Cl. 834 (1967), the disclosure adequately describes a mechanism for directionally controlling the thrust of a jet engine.

Defendant’s argument that the patent fails to disclose a device that is sufficiently operative to satisfy the “useful” requirements of 35 U.S.C. § 101 is equally without merit. Plainly, the disclosed device is capable of performing the function attributed to it, that is, directionally controlling the thrust of a jet engine. The mere fact that problems may be encountered in adapting the device to a particular airplane having particular characteristics or that in one mode of its operation some additional controls would be required does not detract from the overall operativeness of the device. Hildreth v. Mastoras, 257 U.S. 27, 34, 42 S.Ct. 20, 66 L.Ed. 112 (1921).

Obviousness of claim 1

Defendant’s principal attack on the validity of the patent is the contention that claim 1 merely defines subject matter that would have been obvious within the meaning of 35 U.S.C. § 103. Although the resolution of the obviousness issue is ultimately one of law, certain basic factual inquiries must be made to set the context for the ultimate legal conclusion. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

a) The prior art

Douglas was not the first to propose the idea of directionally controlling the thrust of a jet engine either to brake or increase the lift of an airplane. As early as 1918, in British Patent No. 118,123 granted to Harris, a jet engine for propelling an airplane was disclosed. That patent specifically proposed that the tubes through which the propelling gases passed could be:

* * * angularly movable in a vertical direction on horizontal trunnions or pivots for enabling or assisting the aeroplane to rise or descend, and/or the tube may be movable laterally for enabling or assisting the aeroplane to turn. Normally of course the tube would occupy a position in which the aeroplane would be propelled horizontally in a straight path, and to change the movement of the aeroplane means may be provided to enable the pilot to readily alter the position of the tube as required. The tube may be moved to discharge the stream in the front of the aeroplane to produce a braking action and thus retard the speed of the aeroplane when landing. * * *

The prior patents to Anxionnaz (No. 2,396,911), Meyer (No. 2,420,323), and Lysholm (No. 2,280,835), and the text, GAS TURBINES AND JET PROPULSION FOR AIRCRAFT by Smith, all disclose, broadly, the concept of vectoring (/.e., directionally controlling) the hot combustion gases of a jet engine. Lysholm, like Harris, suggests that directional control of the gases may be employed either for increasing the lift or for braking the aircraft. Anxionnaz, Meyer, and Smith disclose deflection of the hot gases for increasing the lift or for maneuvering the aircraft. The Higby patent (No. 1,704,895), instead of vectoring hot gases, discloses the concept of vectoring cold air from a centrifugal fan for imparting lift and assisting in maneuvering the airplane.

These prior art patents disclose a variety of ways for deflecting or vectoring the thrust. Anxionnaz uses shutters or flaps; Lysholm employs fixed conduits and flow control valves for channeling the thrust through the selected conduit; a swivelling nozzle is disclosed in the Smith text; in Harris, the jet tubes are pivotally mounted; and in Higby, pivoting conduits are used. Lysholm specifically discloses that deflection of the jet thrust will result in a fast running engine and a slow moving aircraft; that result is also inherent in both Harris and Meyer.

b) Differences between the prior art and claim 1

The functional concept expressed in claim 1 is that of diverting the combustion gases from a jet engine “to effect, in at least one position of the discharge conduit, a braking reaction on the aircraft.” This concept is expressly disclosed in the Harris patent. The differences between the Harris patent and claim 1 reside in the specific means for diverting the combustion gases. In particular, claim 1 specifies three elements: (a) means for diverting the gases from the jet tube, (b) a discharge conduit for receiving the diverted gases, and (c) means mounting the discharge conduit for pivoting movement. Harris does not disclose any means for diverting the gases from the jet tube; rather, Harris contemplates that the j'et tube itself would be pivotally supported and would be used as the discharge conduit. Harris’ arrangement would necessarily have the outlet of the jet tube “movable about an axis in an arc of approximately 180°, in a plane substantially perpendicular to the plane of the wing” as called for in claim 1.

The Higby patent differs from the combination of claim 1 in two respects. By specifying “combustion gases,” it is implied in claim 1 that the propelling jet is a jet engine; Higby utilizes a cold air centrifugal fan. Higby also differs from claim 1 in that the range of movement of the pivotable conduits in Higby would not be sufficient to direct the thrust in a forward direction to achieve a braking reaction. However, Higby does disclose a means for diverting flow of a gas from a rearward direction a discharge conduit for receiving the diverted gases, and means mounting the discharge conduit for pivoting movement for directional control of those gases.

c) Level of skill in the art

The first flight of a jet-propelled airplane occurred in 1939. In 1941, as a result of development work commencing in the late 1920’s the British flew their first jet airplane. The design of the powerplant used in that airplane subsequently was brought to the United States, and by late 1943 and early 1944, jet airplanes had been designed, built, and flown in this country. Thus, as of October, 1945, the field of jet propulsion, although in its infancy, had evolved into a working reality and had become a specialized part of the larger field of aircraft powerplants. In view of its obvious complexities, the level of skill of those working in that field must be considered to be relatively high. Westinghouse Electric Corp. v. Titanium Metals Corp. of America, 454 F.2d 515 (9th Cir. 1971), cert. denied, 407 U.S. 911, 92 S.Ct. 2439, 32 L.Ed.2d 685 (1972), although less well developed than when the accused structures were produced. At the least, the level of skill in 1945 had progressed beyond that represented by the disclosures of the prior art references discussed herein.

d) The obviousness determination

At the outset, it is necessary to address a matter not heretofore mentioned but which appears to be the major argument advanced by plaintiff for nonobviousness. Plaintiff contends the Douglas patent discloses that the resultant force of the deflected jet thrust must pass “near to or through the center of gravity of the aircraft.” This feature, plaintiff asserts, is “the patentee’s vital contribution to the art” and is “essential” to the success of a V/STOL airplane.

There are two difficulties with this argument. The first is that the Douglas patent nowhere discloses that the resultant force must pass through or near to the center of gravity either of the engine or of the aircraft. Indeed, during the prosecution of the patent, Douglas attempted to amend his disclosure to include this “teaching” but the Patent Office required its cancellation on the basis that it was not disclosed in the application as originally filed. Obedient to this requirement, and without argument, Douglas canceled the amendatory material.

Figure 6 of the patent does pictorially illustrate an arrangement in which the resultant force would act through the center of gravity. However, that showing does not aid plaintiff in his argument. Neither the elected species of Fig. 1, nor the embodiment of Fig. 3, disclose such a relationship. Since two of the three embodiments disclosed do not illustrate that relationship, it can hardly be said that the patent teaches that the resultant must act through a certain point.

Thus, it is attributing too much to Douglas to assess the obviousness of his contribution, as defined by claim 1, in the context of an airplane in which the proper relationship between the vectored thrust and the center of gravity is maintained. The facts are that Douglas only proposed a solution to the problem of how mechanically, to directionally vary the thrust, not how to vary the thrust while maintaining controllability of the aircraft. From the standpoint of adequacy, the specification will permit no broader interpretation. The pictorial illustration of Fig. 6, from which it may be inferred that the thrust acts at or near to the center of gravity, is impractical.

The second difficulty with plaintiff’s argument is that this vital feature is not covered by claim 1. The arrangement of Fig. 6 falls outside the language of the claim, which requires the jet tube to be parallel to the line of flight. Moreover, the only claim that specifically defines the point through which the resultant acts is dependent claim 8 wherein the resultant is described as passing through “a point between the leading and trailing edges of the wing.” However, even that limitation does not describe the resultant as passing through the center of gravity of the aircraft since, in conventional aircraft, the center of gravity is located at the quarter chord of the wing.

The claims are the measure of the invention and resolution of the obviousness question must be based on what is claimed. Kemode Manufacturing Co. v. United States, 347 F.2d 315, 171 Ct.Cl. 698 (1965). Since Douglas only discloses, and claims, a mechanism for varying the thrust of a jet engine to achieve certain results, but has left it to those in the art to determine how to accomplish that without adversely affecting the controllability of the airplane, it is in that context that obviousness must be determined. Turning then to claim 1, it is apparent from the foregoing analysis of the prior art that the Harris patent discloses the basic concept of vectoring the jet thrust to provide either lift or braking. This basic concept being known, the remaining aspects of the claim relate only to the mechanics by which the thrust is directionally controlled.

The prior art discloses a variety of ways for directionally controlling the propelling thrust in an airplane. Harris discloses pivoting the jet tubes for that purpose. While Harris is ambiguous in that it is unclear whether the entire engine would be pivoted with the tubes or the jet tubes would pivot independently of the engine, this does not alter the pertinence of that reference. Even if it is assumed that Harris intended the engine to pivot as a unit with the tubes, Higby discloses a mechanism for maintaining the engine stationary while directionally controlling the thrust. In view of Higby, the conclusion is inescapable that one skilled in the art who wanted to accomplish the objectives of Harris, but without pivoting the engine, would find it obvious to use the independently pivotable conduits disclosed by Higby. No new and unobvious function would result from such a modification of Harris.

Given the relatively high level of skill in this particular art, given the suggestion in Harris for pivotally supporting the jet tube, and given the disclosure of the Higby patent in which pivotally mounted conduits are plainly disclosed, it must be concluded that it would have been obvious in 1945 that the claimed arrangement of conduits could be used to control the direction of the thrust.

In reaching this conclusion due regard has been given to the presumptively correct decision of nonobviousness implicit in the patent examiner’s allowance of this patent. However, neither Harris nor Higby was cited by the examiner. Where, as here, the most pertinent prior art references were not cited by the examiner, the presumptions to which the patentee is entitled are greatly weakened, if not entirely overcome. Nossen v. United States, 416 F.2d 1362, 189 Ct.Cl. 1 (1969), rehearing denied, 422 F.2d 1340, 191 Ct.Cl. 198 (1970), cert. denied, 400 U.S. 823, 91 S.Ct. 44, 27 L.Ed.2d 51 (1970).

As a means of guarding against “slipping into use of hindsight,” Monroe Auto Equipment Co. v. Heckethorn Manufacturing & Supply Co., 332 F.2d 406, 412 (6th Cir. 1964), cert. denied, 379 U.S. 888, 85 S.Ct. 160, 13 L.Ed.2d 93 (1964), the secondary considerations urged by plaintiff in support of nonobviousness have also been carefully reviewed. In large part, these are based on the undisputed success of the Kestrels and Harriers which were the first usable aircraft with V/STOL capabilities and which are the only operational aircraft with that capability even today. However, to be of any value on the issue of obviousness, success must be attributable to the claimed invention and not to other factors. Palmer v. United States, 182 Ct.Cl. 896, 904 (1968). Here, the evidence shows that other factors are highly significant to the success of those airplanes.

As noted previously, a major consideration in V/STOL airplanes is the pilot’s ability to control the airplane during vectoring of the thrust. Controllability was achieved in the accused planes in two ways. The first was the use of four nozzles so arranged that the resultant force of the vectored jets acted at or near to the center of gravity of the airplane. The other was the use of a system of puffer jets to provide an auxiliary control. Neither of these is disclosed nor claimed in the Douglas patent.

In summary, Douglas proposed a specific mechanism for accomplishing the objectives earlier suggested by Harris. The mechanism itself was an obvious variation of that previously suggested by Higby. Unobviousness, if any, lay not in the mechanism but in the manner in which the mechanism was used in an airplane to vary the thrust direction while maintaining controllability of the airplane. The builders of the accused Pegasus, by expending some $70 million in the development of that engine, solved that problem, not Douglas. Having contributed nothing to the development of the critical relationship, Douglas cannot rely on the subsequent success of the accused airplanes to sustain the validity of his patent.

Claim 1 is invalid under 35 U.S.C. § 103. The patent being invalid, the petition must be dismissed.

       This opinion incorporates the greater part of the opinion prepared by Trial Judge Hal D. Cooper, with modifications and additions by the judges. The Trial Judge considered the issue of the invalidity of the patent and held that it was invalid. He then went on to consider whether, in the event the patent was held to be valid, there was an infringement. Since this court holds that the patent was invalid, we do not decide the second issue.

      . Since references to the several claims and the various figures in the patent are made in this opinion, we have reproduced the patent as an appendix to this opinion.

      . There is some evidence that one ordinarily skilled in the art in 1945 would understand that the embodiments of Figs. 1 and 3 should be so arranged that the resultant would act through the^center of gravity. That evidence, while helpful to plaintiff on the question of operativeness, is contrary to plaintiff’s nonobviousness contentions.

      . Although plaintiff did disclose his ideas to the British company that designed the Pegasus, there is no evidence that any use was made of those disclosures by that company.