author: RICH, Judge.

text:
    William R. PALMER and Charles Z. Taylor, Jr., Appellants, v. Chester J. DUDZIK, Appellee.
    Patent Appeal No. 8874.
    United States Court of Customs and Patent Appeals.
    Aug. 2, 1973.

      Charles B. Park III, Charlotte, N. C., atty. of record, for appellants. Floyd A. Gibson, Charlotte, N. C. (Parrott, Bell, Seltzer, Park & Gibson, Charlotte, N. C.), of counsel.
    Kurt Shaffert, Washington, D. C., Robert C. Miller, Washington, D. C. (Shaffert & Miller, Washington, D. C.), attys. of record, for appellee.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN, and LANE, Judges.
   RICH, Judge.

This appeal is from the decision of the Board of Patent Interferences awarding Dudzik, the junior party, priority of invention as to all ten counts, which relate to a method and apparatus used in the production of “set” yarns, on the ground that the senior party, Palmer et al. (hereinafter “Palmer”), had suppressed or concealed the invention within the meaning of 35 U.S.C. § 102(g). We affirm.

The Contested Subject Matter

The invention, a simple one, solves the problem of uneven shrinkage of “set” yarns in a steam autoclave or dye bath. Set yarns are produced from “texturizM” yarns which are thermoplastic yHÉs that have been treated through cHain mechanical processes to impart ¡¡Match thereto. In the prior art process for making set yarns the texturized yarn is wound upon a hollow winding core with a predetermined, uniform amount of “overfeed” in the winding such that the yarn is loosely wound upon the core. This produces a soft package of textured yarn which is subjected to specific heat and moisture conditions in an autoclave or dye bath to produce “set” yarn.

A deficiency in this prior art process was that the autoclave or dye bath treatment did not uniformly treat the yarn but rather affected the yarn in the innermost portion of the package near the winding core differently from the remainder of the yarn in the package. Since uniformity of color and texture in the yarn are critical when the yarn is used in the production of fabric and garments, this non-uniformity was a real problem.

The discovery which both Palmer and Dudzik independently made was that this non-uniformity in the yarn was prevented if the amount of “overfeed” in the winding of the textured yarn onto the hollow winding core is made greater at the beginning of the winding process, when the layers of yarn nearest the winding core are wound, than during the winding of the remaining layers. This results in not winding the yarn as tight on the inside of the package as on the outside. It is accomplished by providing an enlarged ring or collar at the end of the winding core which engages the drive roller of the yarn-winding machine such that the core is rotated more slowly during the initial takeup of yarn which results in the formation of the inside portion of the yarn package.

Figs. 1, 2, and 4 of Palmer are illustrative.

In Fig. 1, there is shown one station of a false twist machine. Y is the yarn, 20 the take-up tube, 24 the drive roll, and 30 is the enlarged ring, preferably rubber, which the drive roll contacts until the yarn package on 20 acquires a diameter greater than ring 30. In Figs. 1 and 2 the enlarged ring is on the tube 20. Fig. 4 shows a modification in which the ring 42 is mounted on the mandrel which carries a perforated metal “dyetex” tube 40.

Facts in Brief

With the assistance of Taylor, Palmer conceived of and reduced the invention to practice in the fall of 1965 by equipping Duplan’s “Leesona 553” machine, Number 7, with the ring devices. Shortly thereafter the market for “set” yarn became depressed so production was suspended and machine No. 7 sat idle on Duplan’s production floor. In the fall of 1966, Palmer equipped Du-plan’s “Turbo” machine with the invention. The Turbo was an experimental machine which was maintained in secret by Duplan. At this time the invention came to the attention of Duplan’s technical director, Mr. Strub, who, after discussion with Mr. Roberts, Duplan’s corporate vice president in charge of manufacturing and president of the textured yarn division, and Mr. H. C. Fisher, another Duplan vice president, stated in a memorandum to Fisher

We would recommend not filing a Patent Application but simply using this system and trying our best to keep it as unpublicized as possible.

Early in 1967, Duplan equipped “ARCT” machines with the ring devices in accordance with the invention and produced and sold “set” yarn made according to Palmer’s invention. Appellants tell us in their brief that “These ARCT machines were located on the production floor of Duplan’s Forsyth Plant among the other production machines and were readily available to be seen by anyone who was on the production floor, including all production personnel and visitors.”

Meanwhile, appellee Dudzik independently conceived the invention on May 8, 1967, and reduced it to practice on May 9, 1967.

In June 1967, a Mr. Daniel Fisher of Leesona Corp. visited Strub of Duplan and advised him of Dudzik’s invention. Strub realizing it was the same as Palmer’s invention, then conferred with Du-plan’s patent counsel and reversed his earlier recommendation, advising that a patent application be filed on Palmer’s work. This was done post haste. Dudzik filed a week after Palmer.

The Board’s Decision

The board made several findings of fact including the following:

3. Palmer actually reduced the invention of the counts to practice, independently of Dudzik, in the fall of 1965.
4. By June 5, 1967, Dudzik actually reduced the invention of the counts to practice, independently of Palmer. -X- -X- -X- * * *
13. Relative to the ARCT machine [of Duplan], * * * yarn was processed thereon in accordance with the invention in April 1967 * * * . Further, as of June 20, 1967, over 18,000 pounds of yarn, processed on the ARCT in accordance with the invention, had been shipped to Coral Sportwear * * *.
14. The record for Palmer shows conclusively that Duplan had disclosed to no one outside that company other than filing the application, what the method or the equipment of the invention of the counts was, even as recently as July 1969, the date testimony was taken on behalf of Palmer. In this regard we note the testimony of Taylor * * * and especially of Edward Silver, the Development Manager at Duplan * * *.

On the law, the board held that Palmer had concealed the invention of the counts within the meaning of 35 U.S.C. § 102(g) and on that ground awarded priority to Dudzik. The board explained its holding as follows:

In other words, under the circumstances of this case we believe that Dudzik, a subsequent inventor of the subject matter of the counts in issue who diligently pursued his labors in attempting to procure a patent in good faith and without any knowledge of the preceding discoveries of another, Palmer, should as against that other, who has deliberately concealed the knowledge of his invention from the public, he regarded as the real inven-tor and as such entitled to his reward under the patent laws. Mason v. Hepburn * * * [13 App.D.C. 86, 1893 C.D. 510 (1898)].

The board did not rely, although noting that it could have, upon Palmer’s having been “spurred into activity” by the visit of Daniel Fisher to Duplan because it found Palmer’s concealment of the invention to be a fact and § 102(g) sufficient ground for its holding without considering any spurring into activity.

The board then answered appellants’ argument that concealment or suppression does not apply here because the time between Duplan’s decision to keep the invention unpublicized and its subsequent reversal of that decision, and the filing of the Palmer and Dudzik applications, “all took place within a period of time much shorter than the one year period prescribed in the statute with respect to public use, commercialization, etc.” The board noted, first, that “the issue of public use is not before us in this proceeding” and then characterized appellants’ argument as based upon appellants’ inability “to find any cited case where the time between the decision to conceal the invention and the filing of the application by the concealer or suppressor is less than the statutory bar of one year relative to public use.” The board further answered appellants’ argument by citation of Howard v. Bowes, 31 App.D.C. 619, 1908 C.D. 547 (1908), which represented just such a case from the days when the public use statutory bar period was two years.

Next, the board answered appellants’ assertion that no concealment should be found because Duplan’s commercial use of the invention commenced three months prior to filing the Palmer application, well within the one-year grace period which appellants maintained was provided by Congress for an inventor to decide whether to file a patent application on his invention. Appellants argued in their brief before the board, and so argue here, that:

* * * Congress has provided that an inventor must file his application for patent within one year of any publication, public use or offer for sale. This period of one year is the time which Congress has determined is reasonable to permit the invention to be perfected, commercial feasibility to be determined, and generally to permit an inventor to decide upon a course of action with respect to his invention, which may include commercialization during the period. There is nothing in the statute or reported decisions precluding the inventor from changing his mind during this one year statutory period. For example, he may commercialize the invention and then decide not to commercialize it so long as he applies for a patent within one year of his commercialization. There is simply no basis for holding that an inventor who, during this one year period, determines initially to keep his invention as unpublicized as possible while he works to perfect the invention to the point of commercialization, is thereafter forever barred from changing his mind. Certainly where he changes his mind well within the statutory period and there has been no injury or harm to the public or anyone else, there is no public policy or good reason demanding that he forfeit his invention.

The board rejected appellants’ contention because, as supported by Finding No. 14, above, “the record clearly shows that it is the yarn produced by the process and the apparatus of the counts which was in commerce, not the process and apparatus themselves. * * * Commercialization of the yarn was not a disclosure of the invention to the public.”

Appellants’ Arguments Here

Appellants maintain that no suppression or concealment exists within the meaning of § 102(g) or Mason v. Hepburn, supra. Specifically, they contend that anyone familiar with texturing machines viewing Duplan’s machines, which were equipped with the invention, would recognize the invention, and since the machines maintained in Duplan’s Forsyth Plant under only normal factory security were readily available to the public, this is sufficient to negate suppression or concealment. Appellants tell us that their Leesona 553 machine equipped with the invention, which was not used by Duplan due to the depressed market conditions, “sat on the production floor of Duplan’s Forsyth Plant in full view of all employees of Duplan and all visitors passing through the plant for at least one year.” Furthermore, appellants tell us, the ARCT machines which were placed in commercial production of yarn in accordance with the invention “were on the production floor among all of Duplan’s other production equipment and in full view of all employees of Du-plan and all visitors passing through the plant.” Thus, appellants contend Du-plan’s commercial use of the invention was such that “knowledge of the invention was made accessible to the public,” and therefore Duplan’s action negated the effect of Strub’s memorandum wherein he said the invention ought to be maintained in secret.

Appellants also argue, alternatively, that Duplan’s commercial use of the invention in such a manner that knowledge of the invention was available to the public “purged” Duplan of any suppression or concealment of the invention. As appellants’ brief explains it:

The sole basis for the doctrine of abandonment, suppression and concealment is that the public would be deprived of the enrichment of the art, or the advancement of the progress of science and the useful arts which would occur were it not for the abandonment, suppression or concealment of the invention. If one who may have commenced a suppression or concealment of the invention subsequently takes affirmative action to eradicate that suppression and concealment and to commercially use the invention under circumstances where knowledge of the invention is made accessible or available to the public, then such a person has purged himself of any previous wrongdoing which may have been attributable to him because of his previous suppression or concealment. This is particularly true where the person took such affirmative action to make the invention accessible or available to the public prior to anyone else’s activity with respect to that same invention or, in other words, prior to anyone else’s entry into the field.

Appellants argue further that under the doctrine of Mason v. Hepburn four conditions must be met to have suppression or concealment:

1. An actual reduction to practice by the inventor against whom the doctrine is to be invoked.
2. An unreasonable and unexplained period of inactivity after the reduction to practice from which to infer an intent to conceal or abandon the invention, or a deliberate, intentional suppression or concealment of the invention.
3. Entry into the field by a subsequent inventor who has made thq invention in good faith, believing himself to be the first inventor.
4. A spurring into renewed activity of the first inventor upon receipt of knowledge of the rival inventor’s entry into the field.

The last three conditions are claimed to be unfulfilled because, in appellants’ view, Duplan had machines equipped with the invention in commercial production of yarn before Dudzik’s invention and before Duplan learned of it.

Appellants contend that neither § 102(g) nor the Mason v. Hepburn doctrine shortens the one-year period they claim to have within which to decide whether or not to patent Palmer’s invention. Appellants say:

By placing the Palmer invention in public use within the meaning of 35 U.S.C. § 102(b) before Mr. Dudzik’s conception and reduction to practice, Duplan had started the one year period within which Duplan could file a patent application on this invention, and Duplan had one year from the date of first public use of the Palmer invention on the ARCT machines within which to file such an application. The fact that Duplan decided to file early in this public use period upon learning of Mr. Dudzik’s entry into the field does not bring this case under 35 U.S.C. § 102(g) or the Mason v. Hepburn doctrine since Duplan had already taken steps to “enrich the art” by placing the invention into commercial use under circumstances which have been consistently held to make knowledge of an invention accessible or available to the public.

Finally, appellants make the following interesting argument based upon the hypothesis that Duplan’s use of the invention before the Dudzik date of invention, as found by the board, would be a statutory bar to Dudzik under 35 U.S.C. § 102(a). As appellants see it,

* * * if Duplan had not filed a patent application and had continued its use of the invention under these same circumstances, then Duplan would have had a 35 U.S.C. § 102(a) defense to any patent obtained by Mr. Dudzik. Since it did file a patent application, Duplan, on the very same facts, finds itself under censure by the Board and faced with forfeiture of its rights and an uncertain future due to the spectre of a patent infringement suit. This is anomalous indeed.

Dudzik contends, and we think correctly, that the facts found by the board and supported by the record establish that Duplan concealed the invention within the meaning of § 102(g).

OPINION

If it were truly established that Duplan’s acts, rather than the Strub memorandum and the testimony, evinced that there was no concealment of the invention, then we could agree with appellants that there was no concealment under § 102(g). However, the board’s finding of fact No. 14 indicates that use of the invention by Duplan in the Forsyth Plant was not inconsistent with Duplan’s stated intention to use the system and try to keep it as unpublicized as possible.

The board relied upon testimony of appellant Taylor and of Edward Silver, Development Manager at Duplan, for its finding that Duplan disclosed the invention to no one outside the company.

Taylor testified, in answer’ to the question whether any person outside of Duplan had been told by Duplan of the invention, that “As far as I know, it has not. Now don’t misunderstand me. I know that the knowledge of that ring is not out even within our company.” Taylor further testified as follows (question numbers omitted):

Q During the time that the number seven 553 machine was equipped with the mandrels as described, the mandrels of this invention covered by the counts of this interference, was anyone not an employee of Duplan Corporation toured through and shown this particular machine?
A No, sir. They haven’t even been shown these machines.
Q What are you referring to now?
A Number 40.
Q In other words, the equipment put on the ARCT machine ?
A Yes.
Q That’s even true down through this day?
A To today, yes, sir.
Q Why is that? Why do you refrain from showing customers or potential customers the machines embodying this invention ?
A I would say number one, it is none of their business how we process our yarn, no more than our throwing instructions are, are personal. Each member of our company is under contract not to divulge processes of operation, and I feel that we take it seriously.

Silver’s testimony includes the following:

Q So it’s your testimony then until the market picked up you would have no occasion to tell anyone about this invention ?
A That’s right.
Q Well, when the market did pick up, did you tell anyone of the invention?
A ,No sir.
Q Even when the market picked up, no one knew that they could come to Duplan for a. superior set yam, that is a set yarn that had better inside-outside package characteristics ?
A Yes, sir, that became general knowledge from our customers after we started shipping this type yarn to them.
-X- # # #• -X- -X*
Q I believe there is testimony that the market picked up again sometime in the fall of 1966 ?
A That sounds logical.
Q So at that time it became known ?
A When we got our machines back in production using the invention, sometime in January or February of ’67. I would say within a couple, three months of that, that Burkyarns [a customer of Duplan] knew that our product was superior to our competitors’ for uniformity.
Q And this was the product that you were making by the method of the invention in the counts of this interference ?
A Yes, sir.
Q Did they then know how you were making it ?
A No, sir.
Q That is they did not know what the method of the invention in the counts of this interference was?
A No, sir.
Q Or for that matter what the equipment of the invention of the counts of this interference was ?
A That’s right.
Q Did anyone else outside of Du-plan know?
A Not that I know of, sir.
Q And this is still true to your knowledge ?
A Yes, sir.

We believe that the above testimony fully supports the factual finding of the board that Duplan had not disclosed the invention to anyone outside of the company. This, coupled with the following testimony, which indicates that the invention was not necessarily apparent even to one skilled in the art who may have toured Duplan’s plant, supports the legal conclusion of the board that Palmer concealed the invention within the meaning of § 102(g). Strub, Duplan’s technical director, testified that even he did not or would not observe the invention in the machines equipped therewith, as follows:

Q Have you taken any visitors there in the last four or five years?
A Oh, certainly.
Q Have you toured the plant with them?
A Yes, sir.
Q Do you happen to know where the number seven 553 machine is located in that plant ?
A In a general way, yes.
Q Did you take any visitors past that machine?
A Not to show them any parts of it. It happens to be next to a wall and aisle, and we walk down the aisle.
Q But you didn’t point it out?
A No, sir.
Q Did you happen to take notice of it?
A A long time ago.
Q Did you happen to notice on any occasion that at least part of it was equipped with mandrels for dytex tubes such as Exhibit No. 2?
A I wouldn’t have observed it as such, no.
Q You never took notice of that?
A Roy walked me past one day and said, “There is our 553 with the dytex tubes.” But I am sure the thing was just sitting idle.
Q Well, when he did that, did you understand the significance of what he had said ?
A To the extent that we were able to make yarn on that machine if we had to.
Q What do you mean “make yarn”? You mean wind yarn on dytex tubes?
A. Right.
Q With the differential overfeed on the inside of the package ?
A We didn’t discuss any real details on it.
Q Did you happen to notice whether those dytex tube mandrels had the enlarged drive rings on them ?
A No, I didn’t notice them particularly.
Q Did you ever observe any of the ARCT machines in the plant equipped ?
A This I have done recently, yes, sir.
Q Equipped in accordance with this invention?
A Right.
Q How recently ?
A Oh, within two or three months.
Q But not before this patent application was filed ?
A No.

Accordingly, we affirm the decision of the board that Palmer concealed the invention within § 102(g), thus forfeiting his right to a patent in favor of the later inventor, Dudzik. Since the board stated that it was deciding priority “On the basis solely of the strict working of the statute,” it is not strictly necessary to answer appellants’ argument that the conditions of Mason v. Hepburn were not fulfilled. However, because the board cited Mason v. Hepburn for its legal conclusion that Palmer should “be regarded as the real inventor,” we will note that the facts drawn from the testimony of Taylor, Silver, and Strub do not support appellants’ assertions that the last three conditions of Mason v. Hepburn are not met here. For example, Duplan not having made the invention accessible or available to the public, as we have found, prior to Daniel Fisher’s June 1967 visit to Strub at Duplan, the decision thereafter by Duplan to file a patent application certainly represents “A spurring into renewed activity of the first inventor upon receipt of knowledge of the rival inventor’s entry into the field.”

While we have concluded that Duplan’s use of the invention was not such that knowledge of the invention was made available to the public, there is a separate theme running throughout appellants’ arguments that either there was no suppression or concealment of the invention in the first place, or — if there was — Duplan purged itself of it. This is the contention that commercial use of the invention by Duplan somehow so enriched the art or made the benefits of the invention available to the public as to prevent a finding of suppression or concealment, despite the fact that, as has already been shown, the nature of the invention which produced the superi- or commercial product was neither disclosed to the public nor deteriAinable by examining the product.

So far as we know, this issue has never been decided in the context of “suppression” or “concealment” under § 102(g), although we recognize that commercial use, without more, has long been a basis for finding a public use of the invention under other portions of § 102. We do not think that a finding of suppression or concealment is negated merely because a secret use of the invention has been commercial. To be sure, the public may have received some benefit from such use of the invention in the sense of being able to get the improved “set” yarn. But this alone has not, to use appellants’ words, so “enriched the art” as to negate a finding of concealment within § 102(g). The public has learned nothing about the invention.

In Thompson v. Weston, 19 App.D.C. 373, 1902 C.D. 52 (1902), the de facto first inventor, Thompson, reduced his invention, a combined ammeter-voltmeter, to practice and placed it in his private laboratory which was not open to outsiders where use of the invention was restricted to Thompson and his assistant. After Weston patented the invention, Thompson filed his application. The court awarded priority to Weston, noting, at 19 App.D.C. at 380, 1902 C.D. at 527, that

* * * where one has completed the act of invention his right to the reward in the form of a patent becomes complete save in two instances that may be satisfactorily shown to exist. First, he loses the right as against the public in general by a public use for the statutory period. Second, by deliberate concealment or suppression of the knowledge of his invention he subordinates his claim, in accordance with the general policy of the law in the promotion of the public interest, to that of another and bona fide inventor who during the period of inaction and concealment shall have given the benefit of the discovery to the public. Viewed in the light of “the true policy and ends of the patent laws,” the latter is the first to invent, and therefore entitled to the reward.

The facts in Thompson do not indicate whether the public would have received any benefit from Thompson’s secret use of the invention, but this personal use by Thompson and his assistant certainly did not prevent a finding of concealment or suppression, the court noting that the doctrine of Mason v. Hepburn applied where it is the knowledge of the invention which is concealed or suppressed.

In Doulett v. Muther, 51 App.D.C. 201, 277 F. 600, 1922 C.D. 101 (1922), the Court of Appeals of the District of Columbia considered the question of concealment of the invention, under the law of Mason v. Hepburn, where the de facto first inventor of a tool for setting invisible eyelets in shoes had maintained the invention in secret from unfriendly competitors. The court held that the rule of Mason v. Hepburn did not apply, noting that Doulett had commercially used the invention in such manner that “[k]nowledge of the invention, therefore, was sufficiently general to insure its preservation.” (Our emphasis.) The court stated at 277 F. 602:

We agree with the Examiner of Interferences that the conduct of Doulett was prompted solely by a desire to prevent the appropriation of his invention by what he conceived to be unfriendly interests, and not by any desire to conceal or suppress it. In the first place, the machine was in daily use in the factory where he was employed. One member of the firm was familiar with its use, and, as already noted, some half a dozen witnesses, most of whom were peculiarly skilled in the art, were equally familiar with it. Knowledge of the invention, therefore, was sufficiently general to insure its preservation, and, because the character of the invention was such as to render its appropriation easy, the conduct of Doulett was consistent and reasonable, in the circumstances. [Emphasis ours.]

We think that the principles of the above quotation are still valid today and that the question whether suppression or concealment under 35 U.S.C. § 102(g) is negated ought to be determined by asking whether the public has gained knowledge of the invention which will insure its preservation in the public domain. Here the commercial use conveyed no knowledge of the invention to the public. Accordingly, we do not find that such use negates a legal conclusion that Palmer concealed the invention within the meaning of § 102(g).

Appellants’ assertion that 35 U. S.C. § 102(b) gives Duplan an absolute one-year period from the date of first public use of the Palmer invention within which to file an application, was answered correctly in the negative by the board. The purpose' and rationale for the one-year grace period of § 102(b) is entirely foreign to the way appellants would apply it. Section 102(b) provides a one-year period during which an inventor may perfect his invention and prepare and file his application, testing it in public, if necessary. The section actually encourages earlier disclosure, publication, or public use of the invention, through which the public may gain knowledge of it. It does not, however, have any bearing on the rights of an inventor who, after his reduction to practice of the invention, conceals it while another makes the same invention and proceeds to apply for a patent, as is the case here.

Finally, appellants have noted that their commercial use of the invention may be a statutory bar under § 102(a) to Dudzik’s obtaining a patent on it, and they assert that it is therefore anomalous to deny them priority. The answer to this is twofold: First, it has not been determined that Duplan’s use of the invention would be a bar under § 102(a) and that question is not before us. Secondly, as has often been noted, a decision in an interference on priority does no more than determine which of two or more inventors is not entitled to a patent because another was legally first. It does not determine, as appellants suggest, that the first inventor in law will be granted a patent. It is the Patent Office which grants patents, not this court. See In re Arkley, 455 F.2d 586, 59 CCPA 804 (1972) and Glass v. DeRoo, 239 F.2d 402, 44 CCPA 723 (1956). The only question with which we are here concerned is which of the parties has the better right to a patent, assuming, arguendo, that there is no impediment to granting a patent to the winner on the priority issue. The policy governing our decision has been fully stated in Brokaw v. Vogel, 429 F.2d 476, 57 CCPA 1296 (1970).

A brief word is in order in response to appellants’ argument that “Duplan purged itself of any wrongdoing which it may have committed” in keeping the Palmer invention secret. Their brief says,

Duplan’s affirmative activities in commercializing this invention clearly eradicated or cured any loss or damage which the public may have suffered * * *.

There is here no question of wrongdoing or of loss or damage to the public. Appellee, citing Brokaw, has neatly expounded the true nature of the situation:

It may be suggested that to the extent that this defense has the ring of Mea Culpa to it, it seems to imply that a quality of wrongdoing accompanies the act of concealment of inventions. This seems quite contrary to the actual rationale for the applicable law, namely that an inventor, once he has reduced his invention to practice, may choose between the alternative courses of trying to maintain it in secrecy or applying for a patent thereon. That there is nothing nefarious about the former course is amply demonstrated by the fact that the common law (and equity) will come to his aid in protecting his secret. The condition which the law does impose on the inventor, and which Appellants are unwilling to accept, is that once he has elected the former he risks that a second inventor of the same invention will be able to secure a patent on it and impose his limited monopoly against him. In view of the policy goal to which the concealment of invention doctrine is directed, this is a fair and just result.

The decision of the board is affirmed.

Affirmed.

      . Chester J. Dudzik, involved on his application serial No. 657,288, filed July 31, 1967, assigned to Leesona Corporation.

      . William R. Palmer and Charles Z. Taylor, Jr., involved on their application serial No. 655,596, filed July 24, 1967, and assigned to Duplan Corporation.

      . Appellants moved to amend (convert) the application from the joint inventor-ship of Palmer and Taylor to sole inventorship of Palmer. The board deemed any ruling on the motion moot in view of its holding awarding priority to Dudzik.

      . § 102. Conditions for patentability; novelty and loss of right to patent
      A person shall be entitled to a patent unless—
      * * * * *
      (g) before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it.

      . Mason v. Hepburn used the expression “real inventor,” which is not an apt expression. Both parties were “real” inventors in the sense of having made the invention independently. From the opinion as a whole it is clear that what the court meant was that the second inventor, de facto, would be considered the first inventor, de jure, and the one entitled to the patent. Another way of looking at it is that, as between the two, the only one entitled to a patent is the second inventor.

      . The board said:
      Nor do we deem it necessary in deciding the question before us, to rely as well we might, on Palmer’s being “spurred into activity” by the visit of Dan Fisher to Duplan, supra, since it has been held that the doctrine enunciated in 35 U.S.C. § 102(g) may properly be applied where the proof indicates deliberate suppression and concealment with nothing more. See Gallagher v. Smith, 206 F.2d 939, 41 CCPA 734; Dewey v. Lawton, 347 F.2d 629, 52 CCPA 1573. Incitation to activity is a factor to be considered for whatever aid it may give in determining the intent of the party alleged to have concealed. Stresau v. Ipsen, 77 F.2d 937, 22 CCPA 1352. In the case before us, however, there is no issue of Palmer’s intention as to concealment; the intention was clearly stated; the concealment by Palmer is a fact. See also Howard v. Bowes, 31 App.D.C. 619 (1908), 1908 C.D. 547.


source: Caselaw Access Project

author: ESTES, Judge.

license: Public Domain

text:
    PACIFIC COAST MEAT JOBBERS ASSOCIATION, INC., et al., Plaintiffs-Appellants, v. The COST OF LIVING COUNCIL, Defendant-Appellee.
    No. 9-7.
    Temporary Emergency Court of Appeals.
    Aug. 18, 1973.
    Andrew H. Field, San Francisco, Cal. (Barry D. Hovis, Victor P. Bonfilio, Jr., San Francisco, Cal., with him on the brief), Angelí, Adams & Holmes, San Francisco, Cal., for plaintiffs-appellants.
    John N. Hanson, Atty., Dept, of Justice, Washington, D. C. (Irving Jaffe, Acting Asst. Atty. Gen., William E. Nelson, Stanley D. Rose, Robert Eliot Easton, Sr., Attys., Dept, of Justice, with him on the brief), for defendant-appellee.
    Before CARTER, CHRISTENSEN and ESTES, Judges.
   ESTES, Judge.

This is an appeal under Section 211 of the Economic Stabilization Act of 1970, as amended, by plaintiffs, Pacific Coast Meat Jobbers Association, Inc., National Association of Meat Purveyors, Inc., and their members, from an order of the United States District Court for the Northern District of California, denying plaintiffs a preliminary injunction against the Cost of Living Council (C. L.C.) restraining the enforcement of the C.L.C.’s temporary meat price ceiling regulations against any of the parties to this litigation.

There is also before us an original application for a preliminary injunction on the same grounds as presented in the trial court. By stipulation of the parties, which will be filed nunc pro tunc, in the court below, it was agreed that if this court denied the motion for a preliminary injunction, the motion of the C.L.C. to dismiss the complaint should also be granted. An appropriate order will be filed nunc pro tunc in the court below. It was further agreed that the notice of appeal heretofore filed from the decision below would include a review of the decision dismissing the complaint. Counsel for the plaintiffs expressly acknowledged that by this stipulation he was agreeing that no question of the failure of the complaint to state a cause of action was presented below.

On March 29, 1973, the C.L.C. issued Subpart M of its Regulations as “Temporary Meat Price Ceilings,” which established ceilings on the prices which could be charged or paid for most meat.

On June 13, 1973, the President issued Executive Order 11723 providing for a comprehensive freeze for a period of 60 days on the prices of all commodities and services offered for sale except the prices for raw agricultural products.

On June 15, the C.L.C. issued “Freeze Regulations” (6 C.F.R. Part 140) to implement Executive Order No. 11723.

On July 19, 1973, the C.L.C. issued its Special Price Rules for Food effective from July 18 to September 12, 1973 (6 C.F.R. 140.91-140.99). These Special Rules and Amendments, among other things, lifted the ceiling on prices charged or paid for most meat, except beef. Under the amendments, it is permissible to charge or pay a price for any meat item derived from swine or sheep above the ceiling price for that item so long as that increased price does not exceed an allowable amount calculated pursuant to the amended regulations. [6 C.F.R. 130.121, 130.127, 130.57D(e)]

Only one of the plaintiffs sought an administrative exception from the price ceilings (under Sec. 207(b) of the Act or C.L.C. Freeze Regulations, Subpart H). The exception has not been acted upon. On July 27, 1973, the plaintiffs commenced this action seeking to enjoin enforcement of these regulations by the C.L.C.

Plaintiffs challenged the C.L.C.’s actions as being arbitrary and capricious and in excess of its authority. They also attack its failure to hold formal hearings in accordance with See. 207(c) of the Act, and its failure to make adequate findings and allege that such findings as it did make were not supported •by substantial evidence. In addition, plaintiffs charge the C.L.C. with allowing the price ceiling on beef to continue in effect after its alleged effects became apparent without holding further hearings and making modifications thereof. Finally, the C.L.C. actions were alleged to be contrary to the statutory requirements of Sections 203(b)(1), (2) and (5).

The burden which must be borne by the plaintiff in order to obtain preliminary relief is not a light one:

“The standards which should guide the decision to grant a preliminary injunction have been often stated. The movant must show a substantial likelihood of success on the merits, and that irreparable harm would flow from the denial of an injunction. In addition, the trial judge must consider the inconvenience that an injunction would cause the opposing party, and must weigh the public interest as well.” McGuire Shaft & Tunnel Corp. v. Local U. No. 1791, U.M.W., 475 F.2d 1209, at 1216 (T.E.C.A.1973), cert. den., - U.S. -, 93 S.Ct. 3008, 37 L.Ed.2d 1009 (6/18/73).

Accord see Pauls v. Secretary of Air Force, 457 F.2d 294, 298 (1 Cir. 1972) ; Unicon Management Corp. v. Koppers Co., 366 F.2d 199 (2 Cir. 1966); Virginia Petroleum Jobbers Ass’n v. F.P.C., 104 U.S.App.D.C. 106, 259 F.2d 921 (D.C.Cir. 1958); Hamlin Testing Labs, Inc. v. A. E. C., 337 F.2d 221 (6 Cir. 1964); Associated Securities Corp. v. S.E.C., 283 F.2d 773 (10 Cir. 1960).

It is clear that plaintiffs have not made the showing necessary to entitle them to a preliminary injunction. There is ample evidence in the record to support the District Court’s decision that the public interest would be impaired by the granting of relief, that appellants have failed to show arbitrary and capricious action by the C.L.C., and that the C.L.C. action was not beyond its legal authority.

For several reasons, it was entirely reasonable for the C.L.C. to decide to keep the ceiling on beef prices longer than on other meats. There was evidence to show that beef prices were rising faster than other meat prices, and that live poultry, sheep, and swine were being destroyed, while beef was only being withheld from the market. The affidavit of Dr. John T. Dunlop, Director of C.L.C., reveals that this problem was studied thoroughly and a decision reached on the basis of extrapolations from the best data available to the C.L. C.

This decision is supported by substantial evidence in the record such that we cannot say that the C.L.C. was acting in an arbitrary or capricious manner, or that the decision of the District Court was erroneous. Also, since the President and those to whom he delegates this power are specifically given by the Economic Stabilization Act the power to institute price controls, and the regulations involved here were enacted in furtherance of the statutory goals of fighting inflation and stabilizing the economy, plaintiffs have failed to show that the C.L.C. actions were illegal. Thus it seems clear that plaintiffs were unable to show a substantial likelihood of success on the merits of the suit that would have entitled them to preliminary relief.

While there was testimony in, the record to show that plaintiffs are experiencing financial losses from the beef price freeze, it is not clear that the harm will be irreparable. The freeze will end on September 12, 1973, and individual members of plaintiff organizations may avail themselves of the C.L.C. exemption procedures where unnecessary hardships are being experienced. And no showing has been made that the public interest would not be impaired by the inflationary price increases which would occur that much sooner if the freeze regulations continuing the price ceiling were enjoined.

In regard to the failure of the C.L.C. to hold public hearings, § 207(c) of the Act provides that “to the maximum extent possible,” but not in every case, such hearings be held. In this case the record does not reveal improvident action, but rather a well-considered step that was reached after extensive consultations, albeit informal ones, with interested groups and individuals, including some members of plaintiff organizations. Obviously, in the emergency presented to the Council, formal hearings in advance of the announcements of the actions of C.L.C. would have been counter-productive, would have aggravated the situation, and there was no necessity for any subsequent hearing to justify continuation.

Plaintiffs argue further that the C.L.C. actions being challenged were contrary to §§ 203(b)(1), (2), and (5) of the Act, which generally require the C.L.C. to act fairly and equitably and prevent hardships, market disruptions, and shortages. They allege that since disruptions and shortages are obviously occurring, the C.L.C. must be found to have acted in disregard of these sections of the Act. The obvious answer to this argument is that complete success, or complete fairness, is neither possible nor required in this kind of administrative action. In order for this court to affirm the C.L.C. action and the court below, it is not necessary that we decide that the C.L.C.’s action was:

. the only reasonable [method], or even that this Court would have reached the same result if the question had arisen in the first instance in judicial proceedings. Unemployment Comm’n v. Aragon, 329 U.S. 143, 153, 67 S.Ct. 245, 91 L.Ed. 136 (1946), Udall v. Tallman, 380 U.S. 1, 16, 85 S.Ct. 792, 13 L.Ed.2d 616 (1965), Udall v. Washington, Virginia and Maryland Coach Co., 130 U.S.App.D.C. 171, 175, 398 F.2d 765, 769, cert. denied, 393 U.S. 1017, 89 S.Ct. 620, 21 L.Ed.2d 561.
In a case such as this the “judicial function is exhausted when there is found to be a rational basis for the conclusions approved by the administrative body.” Miss. Valley Barge Co. v. United States, 292 U.S. 282, 286-287, 54 S.Ct. 692, 694, 78 L.Ed. 1260 (1934), Udall v. Washington, Va. and Md. Coach Co., id. [Jennings v. Shultz, 355 F.Supp. 1198 (D.D.C.1972)].

The District Court in its Order found that the defendant C.L.C. did consider all the factors involved and the potential side effects of its action, and made a rational judgment in determining to act as it did. In University of Southern California v. Cost of Living Council, 472 F. 2d 1065, 1068-1069 (T.E.C.A.1972) this court, citing Bowles v. Seminole Rock and Sand Co., 325 U.S. 410, 65 S.Ct. 1215, 89 L.Ed. 1700 (1941) and Udall v. Tallman, 380 U.S. 1, 85 S.Ct. 792, 13 L. Ed.2d 616 (1965), stated, “It is a well settled principle that the courts place great weight on the interpretations given to statutes and regulations by those agencies charged with the responsibility of administering them.” Similarly, in Udall the Supreme Court states at page 16, 85 S.Ct. at page 801:

When faced with a problem of statutory construction, this Court shows great deference to the interpretation given the statute by the officers or agency charged with its administra-' tion. “To sustain the Commission’s application of this statutory term, we need not find that its construction is the only reasonable one, or even that it is the result we would have reached had the question arisen in the first instance in judicial proceedings.” Unemployment Comm’n v. Aragon, 329 U.S. 143, 153 [67 S.Ct. 245, 250, 91 L.Ed. 136], See also e. g., Gray v. Powell, 314 U.S. 402 [62 S.Ct. 326, 86 L.Ed. 301], Universal Battery Co. v. United States, 281 U.S. 580, 583 [50 S.Ct. 422, 74 L.Ed. 1051]. “Particularly is this respect due when the administrative practice at stake ‘involves a contemporaneous construction of a statute by the men charged with the responsibility of setting its machinery in motion; of making the parts work efficiently and smoothly while they are yet untried and new.’ ” Power Reactor Co. v. Electricians, 367 U.S. 396, 408 [81 S.Ct. 1529, 1535, 6 L.Ed. 2d 924].

The judgment of the District Court is Affirmed, and plaintiffs’ original application here for injunctive relief, for similar reasons, is Denied.

      . Pacific Coast Meat Jobbers Association, Inc. has approximately 100 members and the National Association of Meat Purveyors, Inc. has approximately 400 members, as set forth by exhibits to the complaint.

      . Plaintiffs’ Complaint also prayed “that the court enjoin the Council from enforcing regulations or other procedures with respect to meat products derived from cattle which are different from regulations and procedures with respect to meat products derived from swine and sheep.” However, the granting of such relief might be tantamount to a judicial decision that specific regulations should be applied to appellants and excepting them from the ceilings and subjecting them to certain other regulations, which is a function vested by the Congress in the President and the C.L.C. Plaintiffs’ counsel conceded at the hearing in the District Court that “It is not within the power of the court to fashion regulations.” (Tr. 8-1-73, p. 5) Plaintiffs’ “Memorandum of Points and Authorities in Support of a Preliminary Injunction,” filed in the District Court, states, “Although placing the beef industry on a par with all other food products is the most desirable and practical approach to this problem, there is some question under the decisions of the federal courts whether this Court has jurisdiction to order such a result. See Wilbur v. United States ex rel. Kadrie, 281 U.S. 206, 50 S.Ct. 320, 74 L.Ed. 809 (1929) ; Commonwealth of Massachusetts v. Connor, 248 F.Supp. 656, 659 (D.Mass. 1966) ; McEachern v. United States, 212 F.Supp. 706 (D.D.C.1963). [To the same effect, Amalgamated Meat Cutters and Butcher Workmen of North America, AFL-CIO v. Connally (D.D.C.1971), 337 F.Supp. 737.] Accordingly, plaintiff in this Motion for Preliminary Injunction limits its request and asks only that the Court restrain and set aside the regulations of the Cost of Living Council which extend the freeze on beef products until September 12, 1973.”

      . There is no -constitutional issue before us. At the trial, counsel for plaintiffs expressly stated that he made no contention of any unconstitutionality, and before this court, in support of plaintiffs’ original application for a preliminary injunction, a similar position was taken, apparently in the belief that the statutory and regulatory requirements were equally or more exacting than constitutional limitations.

      . The Cost of Living Council is composed of the following members : the Secretaries of the Treasury, Agriculture, Labor, Commerce, Health, Education and Welfare, Housing and Urban Development, the Director of the Office of Management and Budget, the Chairman of the Council of Economic Advisors, the Director of the Office of Emergency Preparedness, and the Special Assistant to the President for Consumer Affairs. Executive Order 11695, 38 E.R. 1473, January 13, 1973.

      . See the Cost of Living Council Freeze Regulations, Subpart H, in accordance with § 207(b) of the Act.

      . The Deputy Director of the C.L.C. found specifically that formal procedures were not practicable. See 38 F.R. 8505 (April 3, 1973).


author: VAN OOSTERHOUT, Judge.

text:
    LOCAL UNION NO. 11, INTERNATIONAL BROTHERHOOD OF ELECTRICAL WORKERS, AFL-CIO, Appellant, v. George H. BOLDT as Chairman of the Pay Board, John T. Dunlop, as Chairman of the Construction Industry Stabilization Committee, and Los Angeles County Chapter, National Electrical Contractors Association, Appellees.
    No. 9-5.
    Temporary Emergency Court of Appeals.
    Aug. 10, 1973.

      Julius Reich, Los Angeles, Cal., Brundage, Neyhart, Miller, Reich & Pappy, Los Angeles, Cal., for appellant.
    Paul T. Michael, Atty., Dept, of Justice, Washington, D. C. (Harlington Wood, Jr., Asst. Atty. Gen., William D. Keller, U. S. Atty., Matthew A. Schumacher, Asst. U. S. Atty., with him on the brief), for the Government, appellee.
    Kyle D. Brown, Hill, Farrer & Burrill, Los Angeles, Cal., for appellee-National Electrical Contractors Assn.
    Before CARTER, CHRISTENSEN and VAN OOSTERHOUT, Judges.
   VAN OOSTERHOUT, Judge.

This is a timely appeal by plaintiff, Local Union No. 11, International Brotherhood of Electrical Workers, AFL-CIO (Local 11) from final judgment of the District Court entered February 23, 1973, sustaining defendants’ motion for summary judgment and declaring valid a final wage-increase determination of the Construction Industry Stabilization Committee (CISC). The CISC determination approved payment of a wage increase of $1.00 per hour rather than the $1.71 per hour wage increase which was scheduled to be operative June 1, 1972, under the terms of the September 1, 1970 amendment to the Inside Wire-men’s Agreement between Local 11 and the Los Angeles Chapter of the National Electrical Contractors Association (NECA). This court has jurisdiction under § 211(b)(2) of the Economic Stabilization Act of 1970 as amended, hereinafter referred to as the Act.

This suit was brought by Local 11 against the Pay Board, CISC and NECA. The issue was the question of whether CISC properly or, in the alternative, constitutionally rejected the negotiated wage increase of $1.71 per hour.

This court has heretofore determined in litigation between the parties that CISC had rendered a final decision that only $1.00 of the $1.71 wage increase contracted for was allowable and approved, and that the demand of Local 11 that the additional 71 cents not approved be placed in escrow was not permissible and constituted a violation of the Act. United States v. International Brotherhood of Electrical Workers, 475 F.2d 1204 (Em.App.1973). Much of the background material and the pertinent law are there set out and will not be repeated here. The constitutional issues here raised were not reached in our prior decision.

Local 11 is the collective bargaining. agent for approximately 6,000 electrical workers in the Los Angeles area. NECA is the bargaining representative of 200 of its member employers. Local 11 and NECA reopened their 1969-1972 collective bargaining contract and entered into a new agreement extending to 1973 on September 1, 1970. The principal changes made in the new agreement were an increase in wages and benefits of $1.71 an hour, effective June 1, 1972, and the liberalization of the right of NECA members to transfer employees to any job within Los Angeles County. Local 11 contends that the wage increase was the inducement for the transfer rights granted the employers. The amended contract is a comprehensive one dealing with the rights and responsibilities of the parties thereto and contains at Article VIII a separability clause which, subject to certain exceptions not here applicable, provides that if any portion of the agreement is declared void all other provisions of the agreement shall continue to be in full force and effect.

The negotiated wage increase was submitted as required by law to CISC. On April 26, 1972, CISC approved $1.00 of the $1.71 wage increase, denying the remaining 71 cents. Local 11, upon request, was granted a rehearing after which CISC adhered to its prior decision. Other facts will be developed to the extent necessary during the course of the opinion.

Local 11 in its present appeal urges that it is entitled to a reversal for the following reasons:

A. CISC disapproval of the wage increase negotiated by the Union is arbitrary, capricious, and in excess of the CISC’s authority.
B. The failure to approve the Union’s contract is unconstitutional.
1. The failure to approve the Union’s contract is a taking of property without just compensation, in violation of the Fifth Amendment.
* * * * * *
2. The failure to approve the Union’s contract which was made prior to March 29, 1971, while validating contractors’ agreements made prior to March 29, 1971, is a denial of equal protection.”

We reject each of such contentions for the reasons hereinafter stated and affirm the judgment.

We are satisfied that CISC acted within its jurisdiction in limiting the wage increase of Local 11 members to $1.00 an hour. Congress has declared the policy in § 202 of the Act that it was necessary to stabilize wages. In furtherance of that goal, Congress by § 203 delegated to the President authority to stabilize wages at not less than those prevailing on May 25, 1970. As this court noted in Plumbers Local Union No. 519 v. CISC, 479 F.2d 1052 (Em. App.1973), CISC was created to effectuate the stabilization of wages and prices in the construction industry. The existence, function and authority of the CISC has been repeatedly reaffirmed by the President in the various phases of the construction program. See United States v. International Brotherhood of Electrical Workers, supra.

CISC and the trial court had before it extensive charts showing, commencing in 1960, the wage and fringe benefits of Local 11 and other building and trade unions in the Los Angeles area and also the wage and fringe benefits of electrical unions throughout the State of California. The trial court made appropriate and rational findings of fact and based thereon its conclusion of law, stating:

“CISC’s objective was to maintain the historical wage and fringe benefit relationship which had existed between LOCAL 11 and other electrician unions and other building trades unions. In considering the rates of wage and fringe benefits of other electrician unions and other building trades unions, CISC approved a wage and fringe benefit increase for LOCAL 11 which reasonably reflected that historical relationship. The action of CISC was reasonable and had a rational basis.”

Such conclusion is in accord with the applicable law and is based upon substantial evidence.

We now pass to the constitutional issues raised. Before reaching the specific points urged by Local 11, we observe the constitutionality of the Economic Stabilization Act of 1970 as amended and the executive orders and regulations issued thereunder have been repeatedly upheld. Amalgamated Meat Cutters & Butcher Work. v. Connally, 337 F.Supp. 737 (D.D.C.1971); United States v. Lieb, 462 F.2d 1161, 1165 (Em.App. 1972); University of Southern California v. Cost of Living Council, 472 F.2d 1065, 1070 (Em.App.1972). See also CCH Economic Controls, pp. 9054-9058.

Local ll’s contention that the failure to approve the full wage provided by its contract constitutes taking of property without just compensation in violation of the Fifth Amendment lacks merit. The exercise of appropriate regulatory powers has never been held to constitute a taking which would require compensation under the Fifth Amendment. Bowles v. Willingham, 321 U.S. 503, 517-518, 64 S.Ct. 641, 88 L.Ed. 892 (1944); Legal Tender Cases, 79 U.S. (12 Wall.) 457, 551-552, 20 L.Ed. 287 (1870); Wilson v. Brown, 137 F.2d 348 (Em.App.1943).

In reality, Local 11 appears to be arguing that the Government has unlawfully impaired the obligation of its contract. Such argument is persuasively rejected in Amalgamated Meat Cutters v. Connally, supra, 337 F.Supp. at 763-764.

The essence of Local ll’s equal protection argument is that CISC has unlawfully discriminated against the employees and in favor of the employers in disallowing the employees the full negotiated wage increase, while at the same time permitting the employers to obtain windfall profits on the basis they have considered the contractual wage increase in entering into contracts with their customers. There is no evidence in the record to support a finding that any such windfall profits have been realized. 6 C.F.R. § 300.58, as originally published, required renegotiation of contracts with customers entered into after March 29, 1971, to reflect any wage cuts made by CISC. The March 29, 1971, date was deleted in an amendment to the regulation on November 23, 1972. Local 11 charges the amendment is not retroactive, while appellees claim retroactivity. We need not resolve the retroactivity issue as there is no evidence in the record to support a finding that any contractor derived windfall profit arising out of the disallowance of the wage increase in excess of $1.00.

Moreover, a fundamental basis for any argument based on equal protection is that persons who are similarly situated are treated differently under the law. Prices charged customers by contractors concern primarily the customer. The CISC and the trial court determined on the basis of substantial evidence that the wage increase allowed placed the local union employees in a favorable position compared with other electrical workers in California and with comparable laborers in the Los Angeles area.

Classifications such as those involved in the instant case must be upheld if the court can perceive any rational basis for the distinctions which they draw. “It is enough that the [Government’s] action be rationally based and free from invidious discrimination.” Dandridge v. Williams, 397 U.S. 471, 487, 90 S.Ct. 1153, 1162, 25 L.Ed.2d 491 (1970). The burden is upon Local 11 to show that the treatment or classification made is without rational basis or invidious in nature. Dandridge v. Williams, supra; Williamson v. Lee Optical Co., 348 U.S. 483, 75 S.Ct. 461, 99 L.Ed. 563 (1955); Lindsley v. Natural Carbonic Gas Co., 220 U.S. 61, 31 S.Ct. 337, 55 L.Ed. 369 (1911). No such showing has been made in this case.

As stated in Williamson v. Lee Optical Co., supra:

“The day is gone when this Court uses the Due Process Clause of the Fourteenth Amendment to strike down state laws, regulatory of business and industrial conditions, because they may be unwise, improvident, or out of harmony with a particular school of thought.
* * * * ' * *
“The problem of legislative classification is a perennial one, admitting of no doctrinaire definition. Evils in the same field may be of different dimensions and proportions, requiring different remedies. Or so the legislature may think. Tigner v. Texas, 310 U.S. 141 [60 S.Ct. 879, 84 L.Ed. 1124], Or the reform may take one step at a time, addressing itself to the phase of the problem which seems most acute to the legislative mind. Semler v. Dental Examiners, 294 U.S. 608 [55 S.Ct. 570, 79 L.Ed. 1086]. The legislature may select one phase of one field and apply a remedy there, neglecting the others. A. F. of L. v. American Sash Co., 335 U.S. 538 [69 S.Ct. 260, 93 L.Ed. 222], The prohibition of the Equal Protection Clause goes no further than the invidious discrimination. . . .” 348 U.S. 488, 489, 75 S.Ct. 464, 465. See also Developments in the Law — Equal Protection, 82 Harv.L.Rev. 1065, 1077-87.

The classifications apparent in the instant case certainly comport with the expansive due process and equal protection standards set forth in Williamson and other similar Supreme Court cases.

The judgment is affirmed.

      . The equal protection clause of the Fourteenth Amendment by its terms applies only to states. However, the Supreme Court has held that lack of equal protection may be so discriminatory as to constitute a violation of due process. Bolling v. Sharpe, 347 U.S. 497, 74 S.Ct. 693, 98 L.Ed. 884 (1954).


author: TALBOT SMITH, Senior District Judge.

text:
    UNITED STATES of America, Appellee, v. Marie FULTZ, Appellant.
    No. 72-1687.
    United States Court of Appeals, Eighth Circuit.
    Submitted April 13, 1973.
    Decided July 25, 1973.
    Wilfred J. Ritz, Director, Alderson Legal Assistance Program, School of Law, Lexington, Va., for appellant.
    James E. Reeves, U. S. Atty., and J. Patrick Glynn, Asst. U. S. Atty., St. Louis, Mo., for appellee.
    Before LAY and STEPHENSON, Circuit Judges, and TALBOT SMITH, Senior District Judge.

       Hon. Talbot Smith, United States Senior District Judge, Eastern District of Michigan, sitting by designation.

   TALBOT SMITH, Senior District Judge.

The matter before us involves the interpretation of the probation statutes and the couyt rules governing the grant of probation.

Appellant Fultz was charged with causing to be transported in interstate commerce a forged and counterfeited check in violation of 18 U.S.C. § 2314, the charge carrying a maximum penalty of ten year imprisonment and a ten thousand dollar fine. She pled guilty to the charge and, on September 2, 1969, the imposition of sentence was suspended and she was placed on probation for a period of three years. On May 18, 1971, a probation violator’s warrant was issued and after hearing, at which she was represented by counsel, her probation was revoked and she was sentenced to a period of five years in the custody of the Attorney General. Subsequent thereto she filed a motion pursuant to Fed.Rules Cr.Proc. rule 35, seeking to correct her sentence on the ground that it was illegal as an increase in sentence over the three year period of probation on which she had been placed by the court. The motion was denied and this appeal followed.

Simply put, the appellant’s argument is that in event the imposition of sentence upon a convicted defendant is suspended and the defendant is placed upon probation, such defendant has actually been “sentenced to probation” and thus, upon the revocation of probation, cannot be “resentenced to five years imprisonment” without violation of defendant’s constitutional rights under the double jeopardy clause of the Fifth Amendment.

The argument made is mechanistic, does violence to the beneficent purposes of probation, and is unwarranted by the statutes we are about to consider. We reject it.

The First Circuit, in Zaroogian v. United States, 367 F.2d 959 (1st Cir. 1966), put our ruling in the shortest possible compass when it held, without exegesis, that “Suspending imposition of sentence and placing on probation is clearly not a sentence,” citing Bartlett v. United States, 166 F.2d 928 (10th Cir. 1948), which had held, with equal clarity, that “Imposition of sentence was suspended. The term of probation is not the term of sentence.” To the same effect are United States v. Fried, 436 F.2d 784 (6th Cir. 1971), and United States v. Borelli, 333 F.Supp. 369 (D.Conn. 1971).

But out of deference to zeal of counsel in presenting the novel argument we will elaborate somewhat. For many years there were no federal statutes concerning probation. During this period the district courts exercised a form of probation either by suspending sentence or by placing the defendants under State probation officers or volunteers. United States v. Murray, 275 U.S. 347, 48 S.Ct. 146, 72 L.Ed. 309 (1928). But in the so-called Killitts case (Ex parte United States, 242 U.S. 27, 37 S.Ct. 72, 61 L.Ed. 129 (1916)), the Supreme Court denied the right of the district courts to suspend sentence and pointed out the need for Congressional action. Some nine years later, by enacting the Probation Act of 1925, (hereafter the Act) which followed extensive hearings, the courts were invested with probationary powers. Whatever authority exists in the federal courts to exercise such powers derives solely from such Act. United States v. Ellenbogen, 390 F.2d 537 (2nd Cir. 1968); United States v. Beacon Piece Dyeing & Finishing Co., 455 F.2d 216 (2nd Cir. 1972).

The Act so passed carefully differentiates incarceration from rehabilitation. It contrasts the “imposition or execution of sentence” with “plac[ing] the defendant on probation for such period and upon such terms as the court deems best.” 18 U.S.C. § 3651. Upon revocation the court may require the defendant “to serve the sentence imposed, or any lesser sentence, and, if imposition of sentence was suspended, may impose any sentence which might originally have been imposed.” 18 U.S.C. § 3653. Its purpose is clear. It was stated shortly after its passage by Chief Justice Taft in United States v. Murray, swpra, in the following terms:

The great desideratum was the giving to young and new violators of law a chance to reform and to escape the contaminating influence of association with hardened or veteran criminals in the beginning of the imprisonment. Experience had shown that there was a real locus poenitentiae between the conviction and certainty of punishment, on the one hand, and the actual imprisonment and public disgrace of incarceration and evil association, on the other. If the case was a proper one, great good could be done in stopping punishment by putting the new criminal on probation. The avoidance of imprisonment at time of sentence was therefore the period to which the advocates of a Probation Act always directed their urgency. Probation was not sought to shorten the term. Probation is the attempted saving of a man who has taken one wrong step and whom the judge thinks to be a brand who can be plucked from the burning at the time of the imposition of the sentence. The beginning of the service of the sentence in a criminal case ends the power of the court even in the same term to change it. Ex parte Lange, 18 Wall. 163, [21 L.Ed. 872]. Such a limit for probation is a natural one to achieve its end. 275 U.S. at 357, 48 S.Ct. at 149.

The emphasis throughout the entire opinion, as it has been with subsequent studies has been to stress the Act’s differentiation made between “discipline with opportunity to reform” and “subjecting ... to imprisonment.”

In support of the argument made, appellant seeks to make much of the fact that under the probationary order, the . probationer’s activities may be curtailed and thus he may suffer a degree of constraint not applicable to those uncon-victed of criminal acts. But constraint alone answers nothing. An accused who is enlarged to bail normally suffers some constraint. The determination of whether constraint comes within the double jeopardy safeguards of the Fifth Amendment requires examination of the imposition, the purpose and the operation of the restrictive measures.

Obviously, the attempted saving from imprisonment of one who has taken “one wrong step” may require a degree of supervision over him. As was pointed out by Chief Justice Hughes in Burns v. United States, 287 U.S. 216, 53 S.Ct. 154, 77 L.Ed. 266 (1932):

“[The probationer] is still a person convicted of an offense, and the suspension of his sentence remains within the control of the court. The continuance of that control, apparent from the terms of the statute, is essential to the accomplishment of its beneficent purpose, as otherwise probation might be more reluctantly granted, or, when granted, might be made the occasion of delays and obstruction which would bring reproach upon the administration of justice.” 287 U.S. at 222, 53 S.Ct. at 156.

This control of the court has been described, again by the Supreme Court, as “a system of tutelage under the supervision and control of the court which has jurisdiction over the convicted defendant.” Frad v. Kelly, 302 U.S. 312, 58 S.Ct. 188, 82 L.Ed. 282 (1937).

The probation granted, coming as an act of grace to the convicted defendant and for the purposes of his rehabilitation, may, both under the terms of the Act, as well as the judicial interpretations thereof, be coupled with such conditions as the court may deem necessary and proper under the circumstances. The probationer must abide the orders of the court and “obey the terms and conditions imposed upon him.” Kor-ematsu v. United States, 319 U.S. 432, 63 S.Ct. 1124, 87 L.Ed. 1497 (1943). These terms and conditions may be mild or they may be onerous. They may range from no supervision whatever to careful surveillance, depending upon the needs of the probationer and those of society. All of this is for the better accomplishment of the purposes of the Act.

The procedure employed by Judge Meredith in this case is that authorized by 18 U.S.C. § 3653 which provides that “if imposition of sentence was suspended” (as it was here) the court upon revocation “may impose any sentence which might originally have been imposed.” Trial judges were thus given discretion (1) to impose sentence before probation is awarded, or (2) to suspend imposition of sentencing until such time as probation may be revoked. If the first alternative is employed the defendant commences his term of probation knowing that a definite term of imprisonment will follow revocation. Under the second alternative, the term will await the tempering process of time, should, unfortunately, the attempt at community rehabilitation fail. Of course, with respect to either alternative the defendant remains in “a system of tutelage under the supervision and control of the court.” In this situation it has been well said that a probation order is, in point of fact, “an authorized mode of mild and ambulatory punishment, the probation being intended as a reforming discipline,” Korematsu v. United States, supra, quoting Cooper v. United States, 91 F.2d 195 (5th Cir. 1937), and, as such, the probationer cannot be ordered to re-serve it, subsequent to the termination of his probation, without offending double jeopardy, since, for this purpose at least “probation is a punishment tantamount to imprisonment.” Oksanen v. United States, 362 F.2d 74 (8th Cir. 1966). But the argument that upon revocation of probation, however its constraints be defined, sentence of imprisonment in accordance with the provisions of the Act, cannot be imposed without offending double jeopardy, has been consistently rejected. See, e. g., Thomas v. United States, 327 F.2d 795 (10th Cir. 1964), cert. den. 377 U.S. 1000, 84 S.Ct. 1936, 12 L.Ed.2d 1051 (1964); Manley v. United States, 432 F.2d 1241 (2nd Cir. 1970).

The reason is not obscure. Probation, as the term is used in the Act, employs a unique and humanitarian treatment for the treatment of criminals. It seeks to teach a convicted criminal to live in the society and community he has offended. It is to be contrasted, as does the Act itself and its legislative history, with the criminal’s traditional “sentence” to prison, his removal from society and his incarceration with others who have likewise offended. Probation, then, is in no sense a sentence as that term is used in the Act.

But however the terms of probation may be defined, whether as a “sentence,” or “rehabilitation,” the question of double jeopardy should not, for answer, rest in the dictionary. We come now to the core of the argument presented by appellant. It is, simply put, that in event of failure of rehabilitation, with revocation of probation, the then-imposition of sentence theretofore withheld in accordance with the Act, is “double” jeopardy within the Fifth Amendment. The argument proceeds from the premise that the return of the convicted defendant to his community for help and guidance, instead of sending him to prison, is itself a punishment, ergo, he cannot be punished twice. This we reject. The argument does violence to the plain language of the Act and the Congressional intent as consistently interpreted by the Courts.

Affirmed.

      . 18 U.S.C. §§ 3651-3656.

      . Fed.Rules Cr.Proc. rule 32(a) “Sentence shall be imposed without unreasonable delay.”;
      (e) “After conviction of an offense not punishable by death or by life imprisonment, the defendant may be placed on probation as provided by law.”

      . U.S.Const. Amend. V “ . . . nor shall any person be subject for the same offense to be twice put in jeopardy of life or limb; . .

      . The literature on probation and its problems is voluminous. An excellent bibliography on the topic may be found in the American Bar Association’s “Standards Relating to Probation,” approved draft 1970.

      . Now 18 U.S.C. §§ 3651-3656, note 1, supra.

      . See, also, the history of the Act in Roberts v. United States, 320 U.S. 264, 64 S.Ct. 113, 88 L.Ed. 41 (1943).

      . e. g., Roberts v. United States, 320 U.S. 264, 64 S.Ct. 113, 88 L.Ed. 41 (1943).

      . United States v. Murray, supra, quoting the 1920 report of the Judiciary Committee of the House.

      . 18 U.S.C. § 3651: The court may “. place the defendant on probation for such period and upon such terms and conditions as the court deems best.”

      . Frad v. Kelly, supra.

      . See particularly Roberts v. United States, supra.


author: AINSWORTH, Circuit Judge: GODBOLD, Circuit Judge

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Brian Paul SANCHEZ, Defendant-Appellant.
    No. 72-3649.
    United States Court of Appeals, Fifth Circuit.
    July 26, 1973.

      Joseph A. Calamia, John L. Fashing, El Paso, Tex., for defendant-appellant.
    William S. Sessions, U. S. Atty., San Antonio, Tex., Edward S. Marquez, Asst. U. S. Atty., El Paso, Tex., for plaintiff-appellee.
    Before AINSWORTH, GODBOLD and INGRAHAM, Circuit Judges.
   AINSWORTH, Circuit Judge:

Sanchez appeals from his conviction on a jury verdict of guilty, of assaulting, resisting, opposing, impeding and interfering with federal officers while in performance of their official duties, in violation of 18 U.S.C. § 111. We reverse because of the district court’s error in permitting the prosecutor to cross-examine appellant in regard to prior criminal activity, and because of the prejudicial character of the prosecutor’s argument to the jury.

On September 2, 1972, appellant and a group of companions crossed the international border from Juarez, Mexico, to El Paso, Texas. After declaring his United States citizenship and purchases, he passed through Customs. According to the Government’s evidence, appellant then began to interfere with the duties of the United States Customs Inspectors in their attempts to clear the remaining members of the group through Customs. Instead of allowing these people to make their necessary declarations, he continued to supply answers for them, shouting that they were United States citizens, that it was unnecessary to answer the Inspectors’ questions and that they had their civil rights. An argument ensued, which shortly thereafter erupted into a full-blown disturbance involving pushing, shoving and abusive and insulting language by appellant and his group.

Prior to the trial, appellant filed a motion requesting that the court instruct the prosecutor not to mention during the trial appellant’s prior conviction of homicide with a motor vehicle, then on appeal, and a charge of aggravated assault of a bartender, the trial of which had resulted in a hung jury. At the conclusion of the Government’s case, the trial court granted the motion.

In its case in chief the Government produced evidence tending to show an unprovoked assault by appellant on the federal officers. The Government’s theory of the incident is that it was a planned demonstration by appellant and his companions to accomplish a confrontation.

Appellant took the stand in his own defense and denied having assaulted anyone. His version of the incident was that he had been assaulted by the officers. He said that he had been shocked by the incident, and further said, “I never had anything like that happen to me.” Using this statement as a base, the Assistant United States Attorney cross-examined appellant in regard to it, inquiring whether he meant that he had never been involved in acts of violence resulting from conflicts with other human beings. Appellant repeatedly qualified his answer by replying in effect that nothing similar to the incident at the border had ever occurred to him. Despite the ruling of the trial court prohibiting inquiry into certain prior criminal acts of defendant, the prosecutor then asked Sanchez whether he had been involved in an assault on a bartender and received a negative reply. At this point the trial court overruled an objection by defense counsel and reconsidered and rescinded its prior ruling, on the theory that appellant himself had opened the door to this type of questioning. The prosecution then successfully elicited from appellant admissions in regard to the former criminal proceedings against him in connection with aggravated assault and vehicular homicide. Later the trial court instructed the jury in its charge that evidence or admissions of prior criminal acts was not to be considered as evidence of guilt but was to be used only to impeach or challenge the credibility or believability of the defendant.

Evidence of convictions for felonies and misdemeanors involving moral turpitude is admissible for impeachment of a defendant who elects to testify. Steele v. United States, 5 Cir., 1957, 243 F.2d 712; Daniel v. United States, 5 Cir., 1959, 268 F.2d 849; Reese v. United States, 5 Cir., 1965, 353 F.2d 732; Hamilton v. United States, 5 Cir., 1969, 409 F.2d 928; United States v. Sanders, 5 Cir., 1969, 412 F.2d 854; United States v. Smith, 5 Cir., 1970, 420 F.2d 428; United States v. Garber, 5 Cir. 1972, 471 F.2d 212. Criminal activity, short of a conviction, is also admissible for impeachment purposes where the defendant has put his reputation in issue either through his character witnesses, Michelson v. United States, 335 U.S. 469, 69 S.Ct. 213, 93 L.Ed. 168 (1948), or by false assertions on direct examination in regard to prior unlawful activities, Walder v. United States, 347 U.S. 62, 74 S.Ct. 354, 98 L.Ed. 503 (1954). Under this open-door theory it is immaterial that the inquiry pertains to activities of dissimilar offenses. Michelson v. United States, supra.

Applying these principles we find that the appellant’s conviction of homicide with a motor vehicle was a conviction for a felony and was therefore properly admitted, notwithstanding the fact that it is presently on appeal. See United States v. Franicevich, 5 Cir., 1973, 471 F.2d 427, 428. We reach a different conclusion, however, in regard to cross-examination of appellant on the charge of aggravated assault. There was no conviction there, only a mistrial. For this evidence to be admissible for impeachment purposes, it is necessary that it come under the open-door rationale.

Appellant’s testimony that what happened to him that night at the Customs Station never happened before cannot be characterized as throwing open a subject “which the law has kept closed for his benefit.” Michelson v. United States, 335 U.S. 469, 479, 69 S.Ct. 213, 220, 93 L.Ed. 168 (1948). Nothing he said could properly be construed as justifying the cross-examination by the Government which followed relative to the charge of assault of a bartender.

We disagree with the Government’s contention that evidence of appellant’s prior criminal acts was admissible on the issue of intent. Generally evidence of prior criminal activity of a similar nature is inadmissible to prove the commission of the crime charged. The rule, however, is subject to many exceptions, such as where intent is an element of the offense charged and the prior similar acts are not too remote from that offense. United States v. Martinez, 5 Cir., 1972, 466 F.2d 679, 683; United States v. Hayes, 5 Cir., 1971, 444 F.2d 472, 474; United States v. McGlamory, 5 Cir., 1971, 441 F.2d 130, 137; United States v. Pittman, 5 Cir., 1971, 439 F.2d 906, 908; United States v. Justice, 5 Cir., 1970, 431 F.2d 30, 32-33; Weiss v. United States, 5 Cir., 1941, 122 F.2d 675, 682. We are not persuaded that the charge against appellant of assault on a bartender is evidence of an intent to forcibly assault, resist, oppose, impede and interfere with a federal officer, and it was reversible error to permit this cross-examination of appellant by the prosecution.

The Assistant United States Attorney’s argument was inflammatory and seriously prejudicial. It was replete with racial and political undertones. He repeatedly characterized Sanchez as a liar. He argued to the jury in part as follows:

“Now, there is no doubt in my mind that this defendant, Brian Sanchez, was not telling the truth. As I started this case this morning, I told you that yesterday we did have an election. An election is where honorable men participate, in our state, including Ramsey Muniz, who ran for Governor under the La Raza Unida Party.”
Further, he argued:
“Well, we did have an election yesterday, with many of the people claiming to carry now the banner for the betterment of every citizen in our community and in our nation. Well, this Defendant is attempting to assume that responsibility too. But I tell Mr. Sanchez at this time that if he is willing to assume the responsibility as a member of the La Raza Unida Party, as came out in the evidence in this case that he was a member, if he is willing to assume the responsibility of bettering the lives of the Mexican-American in our nation, then by golly, he should have enough machismo and chieannismo to take that stand and tell you the truth and not lie about the fact that he has never been involved in conflicts with other human beings resulting in acts of violence. And you have an absolute right to take into consideration the fact that he lied under oath and he told you before ‘I swear under God that I’m telling you the truth and this is what happened.’ But he did have the chieannismo or the machismo to take that stand and admit what he had done in the past under cross examination. He absolutely denies that fact, until finally I brought out the true facts, and he admitted it. And I ask you, is this the kind of man who first tells you that he swears under God to tell the truth and then takes that stand, sworn to tell the truth in this case and lies to you. And I ask you how can you in good conscience believe what this man has said.”

Later, in closing argument the Government prosecutor continued in the same vein, in part, as follows:

“He has that right to vote for anybody. He does, yes. Ladies and gentlemen, I’m not prosecuting this man and he’s not here today because he’s a member of La Raza Unida. I couldn’t care less if he were a Republican, or a Democrat or a Communist or what.” Further, he argued:
“You see, we forget about the honest, hardworking citizen that never gets involved in any difficulty that requires the action and investigation of inspectors and agents, and action on the part of the U. S. Attorney’s Office. That they are hoping that the system will prevail. Well, I hope that his idea of what the system should be does not prevail. What kind of community are we going to have if this is allowed? He’s not the only one that’s protected. All of us are protected.” Finally, he argued:
“This is not the type of Defendant 'we believe. And I tell you all, members of the jury, that this man is not being prosecuted because of his political belief. I couldn’t care less what he believed in. He is being prosecuted because of what he has done. And I for one would be the last man on earth to try to violate the rights of Brian Paul Sanchez. Because you see, to me it doesn’t matter, because over and above the fact that he may be a Mexican-American, over and above that, or the fact that I may be one, it’s the duty that I have to perform to my country, to my nation and to this Court and to the laws that I was sworn to uphold.”

The remarks and argument of the prosecutor to the jury went far beyond the realm of fair comment. In Dunn v. United States, 5 Cir., 1962, 307 F.2d 883, 886, we found it reversible error “for counsel to express his personal opinion or to make unwarranted inferences or insinuations calculated to prejudice the defendant.” Failure of defense counsel to object to the prosecutor’s prejudicial argument does not preclude our finding plain error sufficient to justify reversal of the conviction. See Rule 52(b), Fed.R.Crim.P. Nor was the error harmless under the circumstances for it is impossible to conclude that the prosecutor’s remarks did not weigh heavily with the jury in bringing about appellant’s conviction. See United States v. Garber, 5 Cir., 1972, 471 F.2d 212, 217; Ginsberg v. United States, 5 Cir., 1958, 257 F.2d 950; Steele v. United States, 5 Cir., 1955, 222 F.2d 628.

Reversed and remanded.

GODBOLD, Circuit Judge

(specially concurring):

I concur in the opinion of Judge Ains-worth with a single minor exception. A prior conviction for a felony is admissible to prove that a defendant who has taken the witness stand is not a credible witness, but the evidence of this appellant’s conviction of homicide with a motor vehicle was not offered for such a purpose. Rather it was offered as a continuation of, and as part of, the prosecution’s improper line of cross-examination predicated upon appellant’s answer “I never had anything like that happen to me,” which the prosecutor recast into a purported statement by appellant that he had never before been involved in any acts of violence relating to other human beings. On the incorrect premise erected by the prosecutor that the appellant had denied participating in any prior act of violence the prosecutor inquired fully concerning the assault on the bartender and the automobile offense, both of which he considered to be prior “acts of violence.” Only after he had wrung dry his cross-examination predicated upon the false premise of a denial that appellant had never made, did the prosecutor establish by his final two questions that appellant had been tried and convicted of the automobile offense. This last minute band-aid did not cure the prejudice of the preceding inquiry that should not have been made at all. In short, when properly offered, the fact of a felony conviction is admissible as probative of the non-believability of the testifying defendant, but it is not admissible in the manner in which done in this trial.

      . The Assistant United States Attorney cross-examined Sanchez in this regard as follows:
      (By Mr. Marquez:)
      “Q. Mr. Sanchez, weren’t you just recently tried for aggravated assault in the State of Colorado, a trial that I will agree ended up in a hung jury?
      “A. Yes, sir.
      “Q. All right. You were charged with an act of violence. The bartender was lashed about the face with a pitcher.
      “A. That’s correct.”

      . Similarly, the prosecution could not, in the guise of impeaching the believability of the defendant on the stand, ask him the unsavory details of a prior incident in his life none of which would be admissible and, at the end, ask if those incidents had not culminated in a felony conviction.