author: KENT, Circuit Judge.

text:
    KEWANEE OIL COMPANY, Plaintiff-Appellant, v. BICRON CORPORATION et al., Defendants-Appellees.
    Nos. 71-1041, 71-1042.
    United States Court of Appeals, Sixth Circuit.
    Argued April 10, 1972.
    Decided May 10, 1973.

      Edward P. Troxell, of Jones, Day, Cockley & Reavis, Cleveland, Ohio, Barry L. Springel, Cleveland, Ohio, on brief; Robert P. Mooney, John P. Haz-zard, Kewanee Oil Co., Cleveland, Ohio, of counsel, for plaintiff-appellant.
    William C. McCoy, Jr., of McCoy, Greene & Howell, Cleveland, Ohio, James A. Hofelich, Cleveland, Ohio, on brief; Theodore L. Abeles, Lum, Biunno & Tompkins, Newark, N. J., of counsel, for defendants-appellees and cross-appellants.
    Before PECK, MILLER and KENT, Circuit Judges.
   KENT, Circuit Judge.

This is an appeal and cross-appeal from a judgment of the District Court which held that the plaintiff-appellant, Kewanee Oil Company, had a protectable property right in 20 of its 40 claimed trade secrets in suit. The District Court granted a permanent injunction which enjoined defendants-appellees from disclosing and/or using the 20 trade secrets in question. The District Court found that Kewanee had failed to establish that the remaining 20 processes, procedures and manufacturing techniques were in fact trade secrets. Kewanee appealed on the theory that all 40 claimed trade secrets should have been protected while Bicron Corporation and the individual defendants filed a cross-appeal maintaining that none of the 40 alleged trade secrets should have been protected.

Kewanee, through its unincorporated subordinate division, Harshaw Chemical Company (hereinafter Harshaw or Ke-wanee), manufactures various types of synthetic crystals. The products resulting from the use of the alleged trade secrets here in controversy are described as sodium iodide thallium activated scintillation crystals. Such crystals are used in connection with nuclear fission equipment utilized in geophysical surveys searching for uranium and oil, in clinical measurement of radio isotopes and in certain aspects of outer space exploration. The crystals have a unique property which permits them to generate a minute particle of light when struck by ionizing radiation.

Harshaw’s research into the growth (manufacture) of such crystals commenced in 1949. As a result of improvements in the manufacturing processes over the years Harshaw was able to produce progressively larger crystals until in 1966 it was able to grow a 17 inch crystal, an accomplishment which no other competitor had achieved. Har-shaw claims that as a result of its research and discoveries over the years it developed many processes, procedures and manufacturing techniques in the areas of: (1) the purification of raw materials; (2) the growth of the crystals; and (3) the preparation and encapsulation of the crystals, all of which, it claims, are trade secrets, giving it a commercial advantage over its competitors.

Each of the individual defendants is a former employee of Harshaw, having a particular skill in some aspect of the production of synthetic crystals. As a condition of employment with Harshaw each of the individual defendants executed at least one agreement, and some of them more than one agreement, which required them, as Harshaw employees, to promise not to disclose confidential information or trade secrets obtained ■ as employees of Harshaw. After varying periods of employment by Harshaw and its predecessor, the employments of the individual defendants were terminated, some voluntarily and some involuntarily. Defendants Hamner, Menefee, Spurney and Suscheck formed the defendant Bicron Corporation to compete with Har-shaw in the manufacture of sodium iodide thallium activated scintillation crystals. The defendants Richert and Novak later became employees of Bicron. Although Harshaw required more than 16 years to perfect its processes and manufacturing techniques to such an extent that it was able to grow a 17 inch crystal, Bicron and its employees (the defendants here) claimed that Bicron was capable of producing such a crystal in approximately 9 months after the enterprise was started.

On this record, as a whole, it appears clear to us, as it 'did to the District Court, that the individual defendants used the information obtained during their employment by Harshaw for the benefit of Bicron. There can be no question on this record but what these individual defendants appropriated, to the benefit of Bicron, Harshaw’s secrets, processes, procedures and manufacturing techniques.

The jurisdiction of the trial court, not questioned, is based upon the diversity of citizenship of the parties. Title 28 U.S.C. § 1382. Clearly the jurisdictional amount is involved. The Ohio law relating to trade secrets is applicable. Erie Railroad Co. v. Tompkins, 304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188 (1938).

In essence, the issues presented on this appeal, except one which will be discussed hereafter, deal with the evidence and the extent of the proof offered and required. Each party finds fault with the findings of fact and conclusions of law adopted by the District Judge. The appellees and cross-appellants, Bicron, et al., claim error on the part of the District Court in its refusal to conclude that Kewanee was not entitled to recover because of failure on the part of Harshaw to maintain security, i. e., secrecy, and cites cases which if read out of the context of this lawsuit might give some support to the cross-appellants’ claim. Excelsior Steel Furnace Co. v. Williamson Heater Co., 269 F. 614 (6th Cir. 1920); Healey & Son, Inc. v. Murphy & Son, Inc., 357 Mass. 728, 260 N.E.2d ’ 723 (1970). The record demonstrates that while unnecessary employees were permitted access to certain manufacturing areas wherein alleged trade secrets were used there was nothing in the evidence to show that such access was of sufficient scope as to disclose the nature of the trade secrets to employees who were not required to have knowledge of them by the nature of their employment. In addition the mere showing or writing about certain manufacturing techniques was found by the District Judge to be insufficient to amount to a disclosure to the public of those trade secrets involved in this law suit, which were found by the District Court to be trade secrets within the law.

The appellant complains because of the failure of the trial court to find that each of the 40 claimed trade secrets was in fact a trade secret. The trial court found that some of the elements of the devices in question relating to processes or procedures in the production of the crystals would be only ordinary good manufacturing techniques, an example being one relating to “scrap recoveries.” (Plf.Exh. 56(1)(i)). A recent article in a popular magazine demonstrates the accuracy of some of the trial court’s conclusions relating to security. In the SATURDAY REVIEW for July 8, 1972, there is a nontechnical description of the nature of synthetic crystals and a description of some of the manufacturing techniques used in the production of such crystals.

This Court has carefully reviewed the Ohio law applicable in the determination of what is and what is not a trade secret and what constitutes misappropriation of such a secret. W. R. Grace & Co. v. Hargadine, 392 F.2d 9 (6th Cir. 1968). There is no need for repetition of that review here.

It would be inappropriate for us to discuss the nature of the alleged trade secrets found by the District Judge to be trade secrets within the meaning of the Ohio law and those found not to be trade secrets. Suffice it to say that the District Judge fully considered all of the evidence offered, and that the alleged errors are based upon the appellant’s and cross-appellants’ disagreement with the trial court’s evaluation of the credibility of the witnesses and the weight of the evidence. It is not for this Court to reconsider the credibility of the witnesses or to reweigh the evidence. After careful consideration of the entire record it appears that the findings of fact of the District Judge are not clearly erroneous within the meaning of Rule 52, Federal Rules of Civil Procedure, 28 U.S.C., and the District Judge properly applied the Ohio law relating to trade secrets.

If only the issues already discussed had been presented to this Court we would be required to affirm the judgment of the District Court. However, in addition to the issues already discussed there is a very serious and important issue of a claimed conflict with the provisions of the Constitution of the United States relating to patents, Article I, Section 8 (Clause 8):

“Section 8. The Congress shall have Power * * *.
“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries; * * *»

and the Patent Laws adopted pursuant thereto, Title 35 U.S.C. § 101 et seq., and whether that conflict requires the application of the provisions of the Supremacy Clause of the Constitution, Article VI, (Clause 2):

“This Constitution, and the Laws of the United States which shall be made in Pursuance thereof, and all Treaties made, or which shall be made, under the Authority of the United States, shall be the supreme Law of the Land; and the Judges in every State shall be bound thereby, any Thing in the Constitution or Laws of any State to the Contrary notwithstanding.”

We must determine whether the trade secrets laws of the State of Ohio are required to be struck down in this case as being in conflict with the United States Patent Laws, and, if so, to what extent. Kewanee urges that the issue presented to this Court requires a determination as to whether the enforcement of any and all state trade secrets laws conflict with the policies of the United States Patent Laws. Thus framed we consider the issue too broad for our consideration in this case.

Our inquiry into the subject should be governed by certain facts which are admitted or obvious from the evidence offered and the concessions of counsel. First, the trade secrets in question relating to the processes, procedures and manufacturing techniques of Harshaw, as conceded by counsel for Kewanee, were “patentable,” that is appropriate subjects for consideration under the provisions of Title 35 U.S.C. § 101. Not only does counsel concede this but it also appears from the evidence that patents have been granted to individuals who have developed processes for producing sodium iodide thallium activated scintillation crystals. (App. I, pgs. 100, 101; App. II, pgs. 1-9). Second, the record demonstrates beyond any doubt that the claimed trade secrets had been in commercial use for more than one year prior to the commencement of this lawsuit. The use of an invention in secret for commercial purposes is considered public use, Huszar v. Cincinnati Chemical Works, 172 F.2d 6 (6th Cir. 1949), and under Title 35 U.S.C. § 102(b), a patent may not issue on an invention which has been in public use or on sale more than one year prior to the date of the application for the patent.

Counsel for Kewanee frankly stated in the course of the arguments before this Court that one of the principle purposes of maintaining the secrecy of inventions, including those here involved, as opposed to seeking patents under the Patent Laws would be to extend the commercial monopoly of the invention beyond the 17 years granted by the Patent Laws.

Therefore, the issue presented to this Court in the instant case may be summarized as follows: Whether a state trade secret law which protects an invention which would be an appropriate subject for a patent under the Patent Laws of the United States, and which has been used commercially for more than one year conflicts with the policies and purposes of Article I, Section 8 (Clause 8) of the Constitution and the Patent Laws adopted pursuant thereto.

At the outset of our discussion of this subject we recognize that certain other Courts of Appeals have refused to declare a conflict between the United States Patent Laws, on the one hand, and the Trade Secret Laws of certain states, on the other hand, within the meaning of the Supremacy Clause of the Constitution. Servo Corp. of America v. General Electric Co., 337 F.2d 716 (4th Cir. 1964), cert. den. 383 U.S. 934, 86 S.Ct. 1061, 15 L.Ed.2d 851 (1966), rehearing denied 384 U.S. 914, 86 S.Ct. 1333, 16 L.Ed.2d 366 (1966); Dekar Industries, Inc. v. Bissett-Berman Corp., 434 F.2d 1304 (9th Cir. 1970), cert. den. 402 U.S. 945, 91 S.Ct. 1621, 29 L.Ed.2d 113 (1971); Water Services, Inc. v. Tesco Chemicals, Inc., 410 F.2d 163 (5th Cir. 1969); Painton & Co. v. Bourns, Inc., 442 F.2d 216 (2nd Cir. 1971).

To enable us to reach a proper conclusion as to the issue presented and determine whether in fact the patent laws of the United States preempt the field of law relating to monopolies to be granted to inventors, we think it appropriate to probe the background of history which resulted in the inclusion of the patent provision in the Constitution. Our consideration of this historical background is based upon the work of several authorities.

Historians trace the patent privilege at least to the beginning of the 15th Century, but it is clear that the patent protection granted in the early days bore little relationship to the nature of the patent protection contemplated by the Constitution and the Laws of the United States. A patent in its early conception was nothing more or less than a monopoly given to an individual or group of individuals temporarily in favor with the rulers of the country involved. Certainly the granting of the protection of a patent was not for the purpose of preserving to an inventor the right to his invention. Affording to an inventor of an industrial device the protection of the monopoly of a patent may be described as an outgrowth of the Industrial Revolution, and the early limitations provided by the patent statutes of the various industrial countries were as much an attempt to place shackles upon the authority of the Crown as to reward an inventor.

It would appear that there is some basis for a conclusion that the Common Law of England awarded some protection to the inventors of useful devices. Nevertheless, there was no codification of an English patent law until approximately 1787, although the Parliament had earlier placed restrictions upon the Crown’s authority to grant patents, and Prager in his work points out (at page 309) that Lord Coke declared an inventors privilege invalid if the monopoly to be protected merely amounted to “a light difference” or “a mere addition” to the then known art.

It appears that some of the American Colonies granted patents prior to the adoption of the Constitution, but it is suggested that most of these patents or monopolies related to the right to produce salt and similar scarce materials for the purpose of insuring a continuing supply. Monopolies, however, were so unpopular that as early as 1641 the Massachusetts Assembly adopted an Act providing in part:

“There shall be no monopolies granted or allowed among us, but of such inventions as are profitable to the Country and that for a short time.” Massachusetts, Colonial Laws, I, 244, quoted by Inlow, supra, pg. 39.

There were, however, some industrial patents granted which in some instances included grants- of land. In 1652 the Massachusetts Assembly granted a patent on what was a real invention, probably a stove. In 1656 this grant was extended for the lifetime of the inventor. There were others for a machine designed to cut grass, and in 1643, John Winthrop, the Younger, was granted a patent or monopoly for an iron foundry with land on which to place it. There were other indicia of similar grants in certain of the Northern Colonies, but in the South only South Carolina seems to have granted the exclusive privilege of mechanical patents including patents in 1732, 1733 and 1756, for rice cleaning machines. The patents described, however, were exceptional and certainly could not be considered as a comprehensive system for the protection of inventors.

During the meetings of the Constitutional Convention there were discussions which resulted in the inclusion of the patent and copyright clause of the Constitution about which James Madison wrote in The Federalist Papers:

“The fourth class comprises the following -miscellaneous powers:
“1. A power ‘to promote the progress of science and useful arts by securing, for a limited time, to authors and inventors the exclusive right to their respective writings and discoveries.’
“The utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged in Great Britain to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of individuals. The States cannot separately make effectual provision for either of the cases, and most of them have anticipated the decision of this point by laws passed at the instance of Congress.” No. 43: Madison.

Thus, those who framed and adopted the Constitution of the United States recognized that industrial progress would be enhanced by the protection of the rights of inventors to their inventions, provided that there be a limitation upon the monopoly grant resulting from the issuance of a patent. All of this culminated in the adoption of the first patent law, enacted by the Congress in 1790. This statute provided for a 14 year exclusive grant giving “the sole and exclusive right and liberty of making, constructing, using and vending to others to be used” of any original discovery.

Lacking the protection of a patent early inventors utilized secrecy in order to preserve a monopoly and derive profits from the production of new and improved useful devices, and the history of trade secrets is largely a trail of broken pledges, misplaced confidences, losses and disappointments. The courts did not extend to inventors any substantial protection of such trade secrets. As pointed out by Louis Orenbuch, supra, “The restrictions -were valuable, trade secrets which were successfully retained for long periods of time were relatively rare.” He cites two cases to illustrate the protection: Newbery v. James, 2 Meriv. 446 (1817), where Lord Eldon considered a bill asking for specific enforcement of an agreement concerning medicines alleged to be a trade secret. The court refused its aid in preserving the unpatented trade secret. Soon after Newbery v. James came the case of Williams v. Williams, 3 Meriv. 157 (1817), in which a son was alleged to have misappropriated a secret for preparing medicine communicated to him by his father. Lord Eldon, for the Court, again refused to grant protection, and said in part:

“I do not think that the court ought to struggle to protect this sort of secret, in medicine. The court is bound indeed to protect them in cases of patents, to the full extend of what was intended by the grant of the patent, and because the patentee is a purchaser from the public, and bound to communicate his secret to the public.”

However, three years later in 1820, Lord Eldon considered the case of Yov-att v. Winyeard, 1 Jc. & W. 394, a suit where an employee had surreptitiously obtained access to the plaintiff’s book of recipes, copied them and then started his own medical business. The court granted relief because there “had been a breach of trust and confidence.”

Finally, in 1851, the English Chancery Court had before it Morison v. Moat, 9 Hare 231, 20 L.J., Ch. 513, which is considered the leading English case of a legally protectable interest in a trade secret. Vice-Chancellor Turner in Morison v. Moat did not consider the purpose of the patent laws, but enjoined the defendant from the use of the secret without enjoining him from divulging the secret although that relief was asked by the plaintiffs.

The law relating to the protection of trade secrets did not begin to develop in this country until the middle of the 19th Century, and then, as might be expected, the decisions protecting such secrets were handed down by the state courts and were based upon contract. A classic example and one of the earliest cases is Peabody v. Norfolk, 29 Mass. 452 (1868), in which relief was granted to the plaintiffs enjoining the defendant, a former employee, from utilizing machinery and processes which had been communicated to him as trade secrets.

From this beginning the laws of the states which granted protection to trade secrets involving inventions and industrial processes developed. In DuPont Powder Co. v. Masland, 244 U.S. 100, 37 S.Ct. 575, 61 L.Ed. 1016 (1917), the Supreme Court of the United States approved protection of a trade secret. Mr. Justice Holmes, speaking for the Court, did not approve a property right in a trade secret, but did approve the enforcement of the confidential relationship existing between the plaintiff and the defendant.

This Court in the recent case of W. R. Grace & Co. v. Hargadine, 392 F.2d 9 (6th Cir. 1968), approved protection of trade secrets. Without the numerous citations of cases we suggest that instances of protection of trade secrets by the courts may be found in most of the states of the United States. However, we have been unable to find any case in which there has been a definitive discussion of the possibility of conflict between the Patent Laws of the United States and the trade secret laws of the several states, within the meaning of the Supremacy Clause, and the issue of preemption of the field of protection of inventions by the Patent Laws of the United States has never been directly and clearly presented to the Supreme Court. However, the language of certain early cases suggests that the Supreme Court was of the opinion that the Patent Laws provided the exclusive means and remedies for the protection of inventors, and that no other monopoly was available.

In an early patent case, Grant v. Raymond, 31 U.S. (6 Pet.) 218, 8 L.Ed. 376 (1832), Mr. Chief Justice Marshall, in discussing the purposes of the Patent Act, had this to say:

“The great object and intention of the Act is, to assure to the public the advantages to be derived from the discoveries of individuals, and the means it employs are the compensation made to those individuals, for the time and labor devoted to these discoveries, by the exclusive right to make, use and sell those discovered, for a limited time.” Id. pg. 243.

That this concept of the patent laws continued to be the view of the Supreme Court is emphasized in Kendall et al. v. Winsor, 62 U.S. (21 How.) 322, 16 L.Ed. 165 (1858). The situation presented to the court in that case was one in which an inventor had withheld making application for a patent until his invention had been perfected and he had had an opportunity to test its value by experiments. An employee copied the invention and made it available to the defendants who continued to manufacture the machine after the plaintiff had obtained letters patent. Mr. Justice Daniel, in discussing the rights of the parties, pointed out in his opinion:

“By correct induction from these truths, it follows, that the inventor who designedly, and with the view of applying it indefinitely and exclusively for his own profit, withholds his invention from the public, comes not within the policy or objects of the Constitution or acts of Congress. He does not promote, and, if aided in his design, would impede, the progress of science and the useful arts. And with a very bad grace could he appeal for favor or protection to that society which, if he had not injured, he certainly had neither benefitted or intended to benefit.” Id. pg. 328. (Emphasis supplied).

And in discussing the following instruction to the jury:

“1. That if Aldridge, under a pledge of secrecy, obtained knowledge of the plaintiff’s machine — and he had not abandoned it to the public — and thereupon, at the instigation of the defendants, and with the knowledge, on their part, of the surreptitiousness of his acts, constructed machines for the defendants, they would not have the right to continue to use the same after the date of the plaintiff’s letters patent.

had this to say at page 331:

“That instruction diminishes or excludes no proper ground upon which the conduct and intent of the plaintiff below, as evinced either by declarations or acts, or by omission to speak or act, and on which also the justice and integrity of the conduct of the defendants were to be examined and determined.”

In Kendall et al. v. Winsor, 62 U.S. (21 How.) 322, 16 L.Ed. 165 (1858), Mr. Justice Daniel discusses at some length the intention of the patent laws, the purposes of the patent laws, the rights of the public as distinguished from the rights of the inventor, and the reasons for inserting into the patent laws a duty on the part of the inventor to disclose his invention.

Mr. Doerfer in his Law Review article {supra, footnote 3) discusses the underlying principles of justification for the patent system and labels it the “exchange for secrets” theory. He points out at page 1441, that in order to promote progress it was not enough that the patent system encourage the development of invention, but it was equally important that inventions not be kept secret. There has been criticism of this theory of the patent law and yet it appears that such is the primary justification for granting a monopoly to an inventor. It thus appears to be well established that the policy of the patent law is to secure protection to the inventor in exchange for the disclosure of the invention at the expiration of the patent. The Supreme Court explained this in Scott Paper Co. v. Marcalus Manufacturing Co., Inc., 326 U.S. 249, 255, 66 S.Ct. 101, 105, 90 L.Ed. 47 (1945), where it was said:

The enactment of these provisions is the mode by which Congress has chosen to carry into effect the policy sanctioned by the Constitution, Article I, § 8, Cl. 8 “To promote the Progress of Science and useful Arts, by securing for limited Times to Inventors the exclusive Right to their Discoveries.” The nature and extent of the legal consequences of the expiration of a patent are federal questions, the answers to which are to be derived from the patent laws and the policies which they adopt. Cf. Sola Electric Co. v. Jefferson Co., 317 U.S. 173, 176, 63 S.Ct. 172, 87 L.Ed. 165; Steele v. L. & N. R. Co., 323 U.S. 192, 204, 65 S.Ct. 226, 89 L.Ed. 173, and cases cited. By the patent laws Congress has given to the inventor opportunity to secure the material rewards for his invention for a limited time, on condition that he make full disclosure for the benefit of the public of the manner of making and using the invention, and that upon the expiration of the patent the public be left free to use the invention. See Special Eequipment Co. v. Coe, 324 U.S. 370, 378, 65 S.Ct. 741, 89 L.Ed. 1006. As has been many times pointed out, the means adopted by Congress of promoting the progress of science and the arts is the limited grant of the patent monopoly in return for the full disclosure of the patented invention and its dedication to the public on the expiration of the patent.” (Emphasis added.)

The same reasoning is found in Sears Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 229, 230, 84 S.Ct. 784, 788, 11 L.Ed.2d 661 (1964):

The grant of a patent is the grant of a statutory monopoly; indeed, the grant of patents in England was an explicit exception to the statute of James I prohibiting monopolies. Patents are not given as favors, as was the case of monopolies given by the Tudor monarchs, see The Case of Monopolies (Darcy v. Allein), 11 Co.Rep. 84 b., 77 Eng.Rep. 1260 (K.B. 1602), but are meant to encourage invention by rewarding the inventor with the right, limited to a term of years fixed by the patent, to exclude others from the use of his invention. During that period of time no one may make, use, or sell the patented product without the patentee’s authority. 35 U.S.C. § 271. But in rewarding useful invention, the “rights and welfare of the community must be fairly dealt with and effectually guarded.” Kendall v. Winsor, 21 How. 322, 329, 16 L.Ed. 165 (1859). To that end the prerequisites to obtaining a patent are strictly observed, and when the patent has issued the limitations on its exercise are equally strictly enforced.

Each of these cases involved a conflict between a state law or rule of law and the Patent Law. In Scott Paper Co. v. Marcalus Manufacturing Co., Inc., 326 U.S. 249, 66 S.Ct. 101, 90 L.Ed. 47 (1945), the question was whether the assignor of a patent was estopped by virtue of his assignment to defend a suit for infringement of the assigned patent on the ground that the allegedly infringed device was that of a prior art expired patent. The Supreme Court held that the doctrine of estoppel, arising out of the contract of assignment, did not apply because such application would be inconsistent with the patent law. In so holding the Court reasoned as follows:

The aim of the patent laws is not only that members of the public shall be free to manufacture the product or employ the process disclosed by the expired patent, but also that the consuming public at large shall receive the benefits of the unrestricted exploitation, by others, of its disclosures. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 117-120, 59 S.Ct. 109, 83 L.Ed 73. If a manufacturer or user could restrict himself, by express contract, or by any action which would give rise to an “estoppel,” from using the invention of an expired patent, he would deprive himself and the consuming public of the advantage to be derived from his free use of the disclosures. The public has invested in such free use by the grant of a monopoly to the patentee for a limited time. Hence any attempted reservation or continuation in the patentee or those claiming under him of the patent monopoly, after the patent expires, whatever the legal device employed, runs counter to the policy and purpose of the patent laws.
* * * * * #
It is thus apparent that the patent laws preclude the patentee of an expired patent and all others including petitioner from recapturing any part of the former patent monopoly; for those laws dedicate to all the public the ideas and inventions embodied in an expired patent. They do not contemplate that anyone by contract or any form of private arrangement may withhold from the public the use of an invention for which the public has paid by its grant of a monopoly and which has been appropriated to the use of all. The rights in the invention are then no longer subject to private barter, sale, or waiver. Cf. Phillips Co. v. Grand Trunk R. Co., 236 U.S. 662, 35 S.Ct. 444, 59 L.Ed. 774; Midstate Horticultural Co. v. Pennsylvania R. Co., 320 U.S. 356, 361, 64 S.Ct. 128, 88 L.Ed. 96; Brooklyn Bank v. O’Neil, 324 U.S. 697, 704, 65 S.Ct. 895, 89 L.Ed. 1296. It follows that the patent laws preclude the petitioner assignee from invoking the doctrine of estoppel, as a means of continuing as against respondent, his assignor, the benefit of an expired monopoly, and they preclude the assignor from estopping himself from enjoying rights which it is the policy of the patent laws to free from all restrictions. For no more than private contract can estoppel be the means of successfully avoiding the requirements of legislation enacted for the protection of a public interest. Compare Pittsburgh, C., C. & St. L. R. Co. v. Fink, 250 U.S. 577, 583, 70 S.Ct. 27, 63 L.Ed. 1151 with Louisiville & Nashville R. Co. v. Mottley, 219 U.S. 467, 476-477; New York Central & H. R. R. Co. v. Gray, 239 U.S. 583, 586-587, 31 S.Ct. 265, 55 L.Ed. 297; Norman v. B. & O. R. Co., 294 U.S. 240, 304-305, 309-310, 55 S.Ct. 407, 79 L.Ed. 885, and eases cited. The interest in private good faith is not a universal touchstone which can be made the means of sacrificing a public interest secured by an appropriate exercise of the legislative power. The patent laws preclude us from saying that the patent assignment, which they authorize, operates to es-top the assignor from asserting that which the patent laws prescribe, namely, that the invention of an expired patent is dedicated to the public, of which the assignor is a member.” 326 U.S. at 255-257, 66 S.Ct. at 104, 105. (Emphasis added.)

In Sears the issue was whether a state unfair competition law could, consistently with the United States Patent Laws, protect the copying of an article unprotected by a Federal patent or copyright. In concluding that a state could not grant protection of an unpatented device under the unfair competition law of the state because it would conflict with the policy of the United States Patent Laws, the Supreme Court had the following to say:

“Just as a State cannot encroach upon the federal patent laws directly, it cannot, under some other law, such as that forbidding unfair competition, give protection of a kind that clashes with the objectives of the federal patent laws.
In the present case the “pole lamp” sold by Stiffel has been held not to be entitled to the protection of either a mechanical or a design patent. An un-patentable article, like an article on which the patent has expired, is in the public domain and may be made and sold by whoever chooses to do so. What Sears did was to copy Stiffel’s design and to sell lamps almost identical to those sold by Stiffel. This it had every right to do under the federal patent laws. That Stiffel originated the pole lamp and made it popular is immaterial. (Emphasis added)
* * *■ * * *
To allow a State by use of its law of unfair competition to prevent the copying of an article which represents too slight an advance to be patented would be to permit the State to block off from the public something which federal law has said belongs to the public. The result would be that while federal law grants only 14 or 17 years' protection to genuine inventions,' see 35 U.S.C. §§ 154, 173, States could allow perpetual protection to articles too lacking in novelty to merit any patent at all under federal constitutional standards. This would be too great an encroachment on the federal patent system to be tolerated.
-* * * -K * *
But because of the federal patent laws a State may not, when the article is unpatented and uncopyrighted, prohibit the copying of the article itself or award damages for such copying. Cf. G. Ricordi & Co. v. Haendler, 194 F.2d 914, 916 (C.A.2d Cir. 1952). The judgment below did both and in so doing gave Stiffel the equivalent of a patent monopoly on its unpatented lamp. That was error, and Sears is entitled to a judgment in its favor.” 376 U.S. 225 (1964) at pgs. 231, 233, 84 S.Ct. 784 at pg. 789 (Emphasis added).

And see also: Compco Corp. v. DayBrite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964).

Even more recently in Lear, Inc. v. Adkins, 395 U.S. 653, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969), the Supreme Court in holding that a licensee should not be required to pay royalties while challenging the validity of the patent concluded that requiring such payment would undermine the federal policy favoring full and free use of ideas in the public domain:

“It seems to us that such a requirement would be inconsistent with the aims of federal patent policy. Enforcing this contractual provision would give the licensor an additional economic incentive to devise every conceivable dilatory tactic in an effort to postpone the day of final judicial reckoning. We can perceive no reason to encourage dilatory court tactics in this way. Moreover, the cost of prosecuting slow-moving trial proceedings and defending an inevitable appeal might well deter many licensees from attempting to prove patent invalidity in the courts. The deterrent effect would be particularly severe in the many scientific fields in which invention is proceeding at a rapid rate. In these areas, a patent may well become obsolete long before its 17-year term has expired. If a licensee has reason to believe that he will replace a patented idea with a new one in the near future, he will have little incentive to initiate lengthy court proceedings, unless he is freed from liability at least from the time he refuses to pay the contractual royalties. Lastly, enforcing this contractual provision would undermine the strong federal policy favoring the full and free use of ideas in the public domain. For all these reasons, we hold that Lear must be permitted to avoid the payment of all royalties accruing after Adkins’ 1960 patent issued if Lear can prove patent invalidity.” Id. at 673-674, 89 S.Ct. at 1913. (Emphasis added.)

The Court said at page 672, 89 S.Ct. at page 1912:

“At the core of this case, then, is the difficult question whether federal patent policy bars a State from enforcing a contract regulating access to an unpatented secret idea.”

The Court gave no answer to this question but did say at page 675, 89 S.Ct. at page 1913:

“Our decision today will, of course, require the state courts to reconsider the theoretical basis of their decisions enforcing the contractual rights of inventors and it is impossible to predict the extent to which this re-evaluation may revolutionize the law of any particular State in this regard.”

We are now in a position where we find it necessary to answer this question as to that portion of the trade secret laws of the State of Ohio applicable to this case. Of help is the decision of this Court in Tappan Company v. General Motors Corporation, 380 F.2d 888 (6th Cir. 1967), where in striking down a claim of unfair competition the Court said at page 892:

“In the Sears, Roebuck and Compco cases the Supreme Court held that the patent provisions (Art. I, § 8, cl. 8) and the Supremacy Clause of the Constitution precluded the individual states from granting protection to articles unprotected by the federal patent laws. Those two cases involved design patents which had been held invalid by lower courts, which nevertheless granted relief on the basis of state unfair competition law. The Supreme Court reversed those determinations, reasoning that the force of the Supremacy Clause, as well as the need for uniform standards of protection, required that the federal decision on these matters remain the sole measure of the rights of the competitors.
In the present case the District Court based its judgment on the theory that Sears, Roebuck and Compco extended even to cases where the patent had not yet been invalidated and still retained its statutory presumption of validity. While we think it would have been better to practice for the District Court to have deferred ruling on this count until after deciding the issues of validity and infringement of the patents, we find no prejudice has resulted to appellant from the Court’s premature disposition of this matter.
The question, as stated in the first sentence of the Sears, Roebuck case is whether state law may grant relief to the owner of a design or article which is not protected by a federal patent or copyright. For our purposes it is important to point out that a design or article may be deprived of such protection for one of two reasons * * * either it may not qualify for a patent or copyright at all (initially at the Patent Office, or upon later judicial determination) or, as happened here, it may be found that the specific infringement against which relief is sought, does not in fact impinge upon the plaintiff’s rights. Thus, in our case, the District Court found that the Fabulous 400 was not entitled to patent protection against the marketing of the Flair line produced by defendants. In this sense, the federal decision that no protection is warranted is the same whether it is based on a finding of patent invalidity, as in Sears, Roebuck, or on a finding of noninfringement as in our case.
To allow relief under state law in either situation would run counter to the paramount federal decision of non-protection. See Columbia Broadcasting System, Inc. v. DeCosta, 377 F.2d 315 (1st Cir. 1967).”

See also Bendix Corporation v. Balax, Inc., 421 F.2d 809 (7th Cir. 1970), cert. denied 399 U.S. 911, 90 S.Ct. 2203, 26 L.Ed.2d 562 (1970), and Massillon-Cleveland-Akron Sign Co. v. Golden State Advertising Co., 444 F.2d 425 (9th Cir. 1971).

Thus, we feel compelled to conclude that a state trade secret law which protects an inventor in the maintenance of a monopoly of a device which is an appropriate subject for patent under the United States Patent Laws is in conflict with the policies and purposes of those patent laws where the invention has been used commercially for more than one year. By such use the inventor has forfeited his right to a patent but by the use of the state trade secret law he is able to exclude competition and prevent disclosure, thus obtaining protection which he could not obtain under the laws of the United States. The state trade secret law has no limitation of time and, therefore, is in direct conflict with the Patent Laws, which have as a purpose the objective of obtaining public disclosure after a limited period of time.

We recognize that our holding in this case is in conflict with the previously cited decisions of other Circuits, Servo Corp. of America v. General Electric Co., 337 F.2d 716 (4th Cir. 1964), cert. den. 383 U.S. 934, 86 S.Ct. 1061, 15 L.Ed.2d 851 (1966), rehearing denied 384 U.S. 914, 86 S.Ct. 1333, 16 L.Ed.2d 366 (1966); Dekar Industries, Inc. v. Bissett-Berman Corp., 434 F.2d 1304 (9th Cir. 1970), cert. den. 402 U.S. 945, 91 S.Ct. 1621, 29 L.Ed.2d 113 (1971); Water Services, Inc. v. Tesco Chemicals, Inc., 410 F.2d 163 (5th Cir. 1969); Painton & Co. v. Bourns, Inc., 442 F.2d 216 (2nd Cir. 1971), but our analysis of the relationship between the Patent Laws of the United States and the Trade Secret Laws of the State of Ohio, as applied in this case, forces us to the conclusion that the field of protection afforded to this plaintiff by that Trade Secret Law has been preempted by the Patent Laws of the United States. We, therefore, hold that the Trade Secret Laws of the State of Ohio may not afford to the plaintiff in this case protection which the plaintiff could not obtain under the Patent Laws.

The judgment for the plaintiff-appellant is reversed and the case is remanded to the District Court for dismissal of the complaint.

      . “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

      . 35 U.S.C. § 102. “A person shall be entitled to a patent unless — (6) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.”

      . H. Toulinin, Handbook of Patents (2nd Ed. 1954) ; E. Burke Inlow, The Patent Grant, John Hopkins University Studies in Historical and Political Science, V. 67, No. 2, Oh. 2 (1950), Johns Hopkins Press, Baltimore; Frank D. Prager, Historic Background and Foundation of American Patent Law, 5 Am.J.Legal Hist. (1961) ; Louis Orenbuch, Trade Secrets and the Patent Laws, Journal of the Patent Office Society, Oct. 1970, Vol. 52, No. 10; W. Robinson, The Law of Patents for Useful Inventions (1890). We have also considered some of the material contained in two Law Review articles, “The Limitation on Trade Secret Law Imposed by Federal Patent and Anti-Trust Supremacy,” Gordon L. Doerfer, Harvard Law Review, Vol. 80 (1967) ; “Inventions and the Law of Trade Secrets after Lear v. Adkins,” Martin J. Adelman, Robert P. Jaress, Wayne Law Review, Vol. 16 (1969).

      . Annals of Congress, First Congress, Second Session, pg. 2270,1 Stat.L. 109.


source: Caselaw Access Project

author: MATTHES, Chief Judge.

license: Public Domain

text:
    Lee Andrew WHITLOCK, Appellant, v. UNITED STATES of America, Appellee.
    No. 72-1372.
    United States Court of Appeals, Eighth Circuit.
    Submitted March 13, 1973.
    Decided May 8, 1973.
    Rehearing and Rehearing En Banc Denied July 3, 1973.
    Robert Thomas Day, Asst. Public Defender, Kansas City, Mo., for appellant.

      Anthony P. Nugent, Jr., Asst. U. S. Atty., Kansas City, Mo., for appellee.
    Before MATTHES, Chief Judge, and ROSS and STEPHENSON, Circuit Judges.
   MATTHES, Chief Judge.

Appellant was found guilty of violating certain sections of the federal statutes relating to narcotic drugs. The judgment of conviction was affirmed in United States v. Whitlock, 442 F.2d 1061 (8th Cir. 1971), where the statutes violated by appellant are set out. Seeking to set aside and vacate the judgment and sentence, appellant filed a motion pursuant to 28 U.S.C. § 2255. Appellant asserted that he had been denied effective assistance of counsel as guaranteed by the Sixth Amendment, in that the lawyer who represented him in his second trial, Lewis E. Pierce, had also represented a government informer, Walton I. Froniabarger, and that such dual representation resulted in a conflict of interest which permeated the trial to appellant’s prejudice.

Judge Hunter, who presided over the trial, conducted an evidentiary hearing on the motion to vacate, and held:

“It is very clear from the evidence and’ it is the finding of the court that there was no such conflict of interest that existed at any time that could possibly have had an adverse effect on Petitioner Whitlock in any of the proceedings that he wishes to have set aside and affected by this hearing.”

From the denial of relief, appellant brought the case here for review. He is represented by the United States Public Defender for the Western District of Missouri. During oral argument before this court on March 13, 1973, it developed that the conflict of interest issue had not been fully ventilated at the hearing before Judge Hunter. Appellant’s attorney argued that Mr. Pierce knew at the time of trial that Fronia-barger, also represented by Pierce, had acted as a government informer. The Assistant United States Attorney violently disagreed with this assertion and, since the record was not clear, we remanded the case to the district court for the limited purpose of holding another evidentiary hearing and with specific directions to determine whether attorney Pierce had assisted Froniabarger in becoming a government informer before or after appellant’s trial. In compliance with our remand, Judge Hunter held another evidentiary hearing on April 13, 1973. Appellant was present and was represented by the Public Defender and one of his assistants. After the hearing, the court filed findings of fact and again held that there was no impropriety in Mr. Pierce’s representation of appellant. The findings of Judge Hunter and the transcript of the April 13 proceedings have been certified to this court and have received our careful consideration. The matter is now ripe for a decision.

A chronology of the pertinent proceedings and facts will serve to demonstrate the basis for appellant’s claim that he was denied effective representation of counsel.

1. On July 3, 1969, the trial of appellant and Froniabarger, jointly indicted, commenced. Appellant was represented by the Public Defender; Froniabarger was represented by Mr. Pierce. On July 7, the court granted a severance to Fro-niabarger, and declared a mistrial as to him. An eventual jury deadlock resulted in a declaration of mistrial as to appellant also, and a new trial was ordered.

2. Appellant’s second trial, which resulted in his conviction, began on July 29, 1970, and was terminated on July 30. Some time prior thereto appellant employed Mr. Pierce, and the latter represented appellant at the trial and on appeal.

3. Commencing on or about October 16, 1969, Froniabarger was “tried out” as a government informer. His service proved to be unsatisfactory and he was terminated about March 14, 1970.

4. When appellant employed Mr. Pierce, Froniabarger was not an informant and Pierce had no knowledge that Froniabarger had ever acted in such a capacity. Froniabarger was not an informer on July 29 and 30, 1970, the trial dates of appellant.

5. Some time after appellant’s second trial and conviction, Mr. Pierce did assist Froniabarger in another attempt to become an informer.

Based upon the foregoing facts, which stand undisputed, Judge Hunter in his findings filed April 26, 1973, concluded that:

“Mr. Pierce’s participation in as--sisting Mr. Froniabarger to become an informer occurred subsequent to Lee Andrew Whitlock’s conviction.
“Under the peculiar circumstances of this case, it is clear that Mr. Pierce did not have a conflict of interest at any time prior to the conviction of Lee Andrew Whitlock.”

We affirm the decision of the district court.

There can be little, if any, dispute as to the principles governing the basic question presented by this appeal. The right of the accused to effective representation of counsel is fundamental. As a corollary to this principle, “the ‘Assistance of Counsel’ guaranteed by the Sixth Amendment contemplates that such assistance be untrammeled and unimpaired by a court order requiring that one lawyer shall simultaneously represent conflicting interests. If the right of counsel means less than this, a valued constitutional safeguard is substantially impaired.” Glasser v. United States, 315 U.S. 60, 70, 62 S.Ct. 457, 465, 86 L.Ed. 680 (1942). See Austin v. Erickson, 477 F.2d 620 (8th Cir. 1973). But it is also settled law that joint representation of codefendants is not per se a violation of the Sixth Amendment. See United States v. Williams, 429 F.2d 158 (8th Cir. 1970), where we dealt with the issue of dual representation and conflict of interest and cited numerous cases which had considered the issue.

Here, appellant’s basic claim of ineffective assistance of counsel is rooted in the undisputed circumstance of Mr. Pierce’s representation of Froniabarger at the first trial coupled with representation of appellant in the second trial. Certainly, no one could assert that Pierce’s representation, first of Froniabarger, and later of appellant, would per se run counter to any rule of law or to the mandate of the Sixth Amendment. And such a contention is not urged upon us. But appellant seizes upon the short tenure of Froniabarger from October 16, 1969, to March 14, 1970, as a prospective informer for the Bureau of Narcotics and Dangerous Drugs (BNDD). From this circumstance appellant deduces that Mr. Pierce made available information to Froniabarger which somehow incriminated or prejudiced appellant, in violation of Mr. Pierce’s duty and obligation to render full allegiance and loyalty to appellant in defending the narcotic charges. Appellant assumes too much. There is not a shred of evidence to show that Mr. Pierce imparted any information at any time to Froniabarger which related to the charges against appellant. And, as we have observed, and as Judge Hunter very properly found, Mr. Pierce knew nothing of Froniabarger’s activities as a would-be informer until after appellant had been tried and found guilty.

The question raised by appellant presented an issue of fact and on this record we are satisfied that Judge Hunter reached the only conclusion properly inferable from the evidence, that is, that “Mr. Pierce did not have a conflict of interest at any time prior to the conviction of Lee Andrew Whitlock.” By way of addendum, and in view of the rather serious nature of the charges which, if true, would reflect upon Mr. Pierce’s standing as a member of the bar, we take occasion to observe that Mr. Pierce has appeared in this court in a number of cases and has always conducted himself in accordance with the high traditions of the legal profession.

The order appealed from is affirmed.

      . Later, Froniabarger pled guilty. See United States v. Froniabarger, 467 F.2d 845 (8th Cir. 1972).


author: MOORE, Circuit Judge:

text:
    Peter J. BRENNAN, Secretary of Labor, United States Department of Labor, Plaintiff-Appellee, v. The WILSON BUILDING, INC., Defendant-Appellant.
    No. 71-1813.
    United States Court of Appeals, Fifth Circuit.
    April 27, 1973.
    Rehearing Denied May 22, 1973.

      R. F. Wheless, Jr., Cole Thomson, Houston, Tex., Charles L. Hale, Jr., Corpus Christi, Tex., for defendant-appellant.
    M. J. Parmenter, Dept, of Labor, Dallas, Tex., Carin Clauss, Bessie Margolin, Asso. Sol., Bobbye Spears, Atty., U. S. Dept, of Labor, Washington, D. C., for plaintiff-appellee.
    Before JOHN R. BROWN, Chief Judge, and MOORE  and RONEY, Circuit Judges.

       Hon. Leonard P. Moore, Senior Circuit Judge of the Second Circuit, sitting by designation.

   MOORE, Circuit Judge:

In this appeal we are asked to decide whether certain building service employees of the appellant-employer are engaged in commerce for purposes of the Fair Labor Standards Act (FLSA) and whether said employees are therefore covered by the Act’s minimum wage and other provisions.

The action was brought by the Secretary of Labor pursuant to Section 17 of the Act to enjoin appellant Wilson Building, Inc. (“the employer”), from violating the Act’s minimum wage, overtime, and record-keeping requirements and to compel payment, with interest, of compensation owing to the employer’s building maintenance personnel. The employer admits that it paid the named employees less than the prescribed federal minimum wage during the period in question (1967-70), that it failed to pay them the prescribed premium for overtime work, and that its bookkeeping records did not satisfy the Act’s requirements. The employer, however, (1) denies that its payment and record-keeping practices were unlawful, arguing that it was not subject to the Act’s requirements because it is a purely local business, and (2) urges that the district court erred in finding that the activities of the service employees engaged them in commerce for purposes of the FLSA. Concluding that appellant’s elevator operators were engaged in commerce under 29 U.S.C. § 203(b), and that appellant was an “enterprise engaged in commerce” under 29 U.S.C. § 243(r)-(s) (l), the district court ruled that appellant had violated the Act and granted the relief sought by the Secretary. The district court’s opinion is reported at 320 F.Supp. 664 (S.D.Tex. 1970). We affirm.

I.

The relevant facts are not in dispute. Appellant is a Texas corporation doing business in Corpus Christi. It has offices in that city at 1701 Wilson Tower Building which, together with the adjoining Wilson Building (also an office building), the Wilson Tower Garage, and two parking lots, appellant owns and operates for profit. The office buildings are occupied by a miscellany of tenants, including lawyers, doctors, accountants, geologists, oil companies, lease brokers, and others. The buildings and parking facilities are maintained by various of appellant’s service employees, including (1) elevator operators, (2) maintenance employees (e. g., carpenters, mechanics, and plumbers) and (3) janitors and maids. The district court’s findings as to each category of employees were as follows.

Elevator Operators. — Nine employees regularly operate the four elevators in the seventeen-story Wilson Tower Building. All four elevators transport passengers as well as persons delivering interstate mail, parcel post, and freight. Mail is delivered to the tenants twice daily, parcel post two or three times daily, and freight is delivered regularly each week to various tenants. The district court found that although the time devoted by the elevator operators to carrying postmen and freight deliverymen is small in comparison to the time devoted to the carrying of other passengers, “the interstate deliveries of mail, freight and parcel post to The Wilson Tower Building are sufficiently regular, frequent, and substantial in amount to constitute said elevator operators as being engaged in commerce; and the elevator operators are so closely related to the movement of commerce as to be a part of it.” 320 F.Supp. at 666.

Maintenance Employees. — These employees remodel office space in appellant’s two buildings and perform general carpentry and repair work for the benefit of tenants. The remodeling work is done at the request of tenants, pursuant to the rental agreement, subject to the •approval of appellant. The lower court found that a substantial portion of the materials installed and supplies handled by the maintenance employees, such as the lumber used for wall paneling, doors, etc., is manufactured outside the state of Texas, 320 F.Supp. at 667. In addition, mechanics and plumbers maintain the air conditioning and heating systems in the buildings, and they, as do the other maintenance employees, handle replacement parts and goods which are manufactured out of state.

Janitors and, Maids. — These employees perform custodial services for the benefit of tenants, as required by the rental agreement between tenants and appellant. Their work includes cleaning offices and hallways, stocking restrooms with soap, paper towels, and toilet paper, and replacing light bulbs and fluorescent lamps throughout the buildings. The district court found that a substantial quantity of the electrical and janitorial supplies handled by the janitors and maids is manufactured out of state.

As noted, the district court concluded that the elevator operators’ transportation of mail, parcel post, and freight is regular, frequent, and substantial enough to render the operators “engaged in commerce” within the meaning of the Act, thus satisfying the requirement of Section 203(s) that appellant’s enterprise have employees engaged in commerce. Regarding the maintenance employees, janitors, and maids, however, the court concluded that even though they handle products which have trav-elled interstate, they are not engaged in commerce because the products do not meet the Act’s Section 203(i) definition of “goods”. The court determined that “such materials when handled and worked on by [appellant’s] employees are in the hands of the ultimate consumer,” i. e., appellant, and that they therefore are out of the flow of commerce. 320 F.Supp. at 669. By virtue of the elevator operators’ engagement in commerce, however, the court ruled that the other named employees are employed in an enterprise engaged in commerce and that they too are entitled to the benefits of the Act.

On appeal both appellant and the Secretary find fault with the district court’s decision. Appellant argues that the court erred in finding that the elevator operators are engaged in commerce and in ruling that all the employees in question are covered by the Act’s enterprise doctrine. The Secretary, while agreeing with the court’s result, argues that the court erred by not ruling that the activities of the maintenance and janitorial employees provide independent grounds for sustaining enterprise coverage under the Act. Since we are of the opinion that the elevator operators are engaged in commerce within the meaning of Section 203(s) we need not, and do not, reach the question whether the activities of the other employees provide an independent ground for finding engagement in commerce; under the Act’s enterprise doctrine they are entitled to the benefits prescribed by the FLSA.

II.

We begin our analysis of the question whether appellant’s elevator operators are engaged in commerce mindful of Mr. Justice Frankfurter’s exhortation that the “search for a dependable touchstone by which to determine whether employees are ‘engaged in commerce or in the production of goods for commerce’ is as rewarding as an attempt to square the circle.” A. B. Kirschbaum Co. v. Walling, 316 U.S. 517, 520, 62 S.Ct. 1116, 1118, 86 L.Ed. 1638 (1942). In that case the Court, as it has in numerous cases since, recognized that application of the FLSA to an infinite number of industrial and commercial situations is essentially a line-drawing exercise, and that in delineating between areas of activities regulated by the Act and those left to state regulation, courts should be guided by the fixed points of national policy, legislative history, and administrative practicalities. 316 U.S. at 523, 62 S.Ct. 1116. Writing as we do thirty years after Kirschbaum, we are aided by a fourth guideboard — the long line of judicial decisions which have construed the outer reaches of the Act. We need not dwell on points which, by now, the cases have rendered irrefutable, although we do well to note at the outset the fundamental precepts that influence our reasoning in the present appeal. Thus, for example, it has been firmly established that the phrase “engaged in commerce” within the meaning of Section 203 of the FLSA is to be given a broad, liberal construction rather than a strained, technical one in order to effectuate the Act’s purposes, Mitchell v. C.W. Vollmer & Co., Inc., 349 U.S. 427, 429, 75 S.Ct. 860, 99 L.Ed. 1196 (1955) ; Mitchell v. Lublin, McGaughy & Assoc., 358 U.S. 207, 211, 79 S.Ct. 260, 3 L.Ed. 2d 243 (1959); Shultz v. Mack Farland & Sons Roofing Co., Inc., 413 F.2d 1296, 1300 (5th Cir. 1969); that the Act has a remedial and humanitarian purpose, Tennessee Coal, Iron & R.R. Co. v. Muscoda Local No. 123, 321 U.S. 590, 597, 64 S.Ct. 698, 83 L.Ed. 949 (1944); Mitchell v. Ballenger Paving Co., Inc., 299 F.2d 297, 301 (5th Cir.), cert. denied, 370 U.S. 922, 82 S.Ct. 1565, 8 L.Ed.2d 503 (1962), which was designed to provide a minimum standard of living necessary for the health, efficiency, and general well-being of workers (29 U.S.C. § 202(a)), as well as to prescribe certain minimum standards for working conditions, Wirtz v. Ti Ti Peat Humus Co., Inc., 373 F.2d 209, 212 (4th Cir.), cert. denied, 389 U.S. 834, 88 S.Ct. 37, 19 L.Ed.2d 94 (1967); and that Congress intended the Act “to extend federal control in this field throughout the farthest reaches of the channels of interstate commerce,” Walling v. Jacksonville Paper Co., 317 U.S. 564, 567-568, 63 S.Ct. 332, 335, 87 L.Ed. 460 (1943); see Wirtz v. Columbian Mutual Life Ins. Co., 380 F.2d 903, 907 (6th Cir. 1967). Moreover, practical considerations, and not technical conceptions, guide us in determining coverage of the Act, and the “crucial test is the nature of the activities of the employee, rather than the general character of the employer’s business,” Wirtz v. Wohl Shoe Co., 382 F.2d 848, 850 (5th Cir. 1967). With these principles in mind, we turn to the activities of the elevator operators in the present appeal, and to the narrow issue of whether these activities engage the operators in commerce.

III.

Section 203(b) of the FLSA defines commerce as including “trade, commerce, transportation, transmission, or communication among the several States” (emphasis added). In support of his position that the elevator operators are engaged in commerce because they transport interstate mail and freight which continue to flow in commerce until delivered to the offices of the tenants, the Secretary points to numerous decisions holding that employees whose duties are directly related to the transportation of goods in interstate commerce are themselves engaged in commerce within the meaning of the Act. Our attention is directed specifically to the line of cases beginning with Walling v. Jacksonville Paper Co., supra.

In Jacksonville Paper Co. the Supreme Court held that the FLSA was applicable to employees (truck drivers) of a wholesale paper company who transported from company warehouses within the state to retail stores also within the state interstate goods that had temporarily been detained at such warehouses. After noting that “the purpose of the Act was to extend federal control in this field throughout the farthest reaches of the channels of interstate commerce,” (317 U.S. at 567, 63 S.Ct. at 335) the Court ruled that the interstate journey of the goods did not end, and the goods thus did not cease to flow in commerce, until they reached their final destination —the retail stores (“there is a practical continuity of movement of the goods until they reach the customers for whom they are intended”), 317 U.S. at 568, 63 S.Ct. at 335. The Court then stated:

The fact that all of respondent’s business is not shown to have an interstate character is not important. The applicability of the Act is dependent on the character of the employees’ work [citation omitted]. If a substantial part of an employee’s activities related to goods whose movement in the channels of interstate commerce was established by the test we have described, he is covered by the Act. 317 U.S. at 571-572, 63 S.Ct. at 337.

It is plain to us that the goods transported by appellant’s elevator operators (mail, parcel post and freight) continue to flow in interstate commerce beyond the lobby of the office buildings, where appellant argues the journey technically ends, and that they do not come to rest until delivered to the offices of the tenants. Furthermore, it is plain that without the labor provided by the elevator operators in transporting the mail and freight deliverynien throughout the building, the interstate goods would not be delivered to their intended recipients in each office. Appellant urges, however, that the activities of the elevator operators, even though related to the movement of goods traveling interstate, cannot be deemed to engage them in commerce since its business is strictly local in scope. This argument fails, however, in light of the numerous cases holding that applicability of the Act depends not on the character of the employer’s business, but on the nature of the employee’s work. See, e. g., Jacksonville Paper Co., supra, 317 U.S. at 571-572, 63 S.Ct. 332; Mitchell v. Lub-lin, McGaughy & Assoc., supra, 358 U.S. at 211, 79 S.Ct. 260.

Although we have not heretofore ruled on the precise question posed here, namely, whether elevator operators transporting mail and freight in an office building are engaged in commerce, we have had occasion to determine whether elevator operators engaged in other activities satisfied the Act’s coverage requirements. See, e. g., Mitchell v. Sunshine Dep’t Stores, Inc., 292 F.2d 645, 647, 648 (5th Cir. 1961); accord, Sucrs, de A. Mayol & Co., Inc. v. Mitchell, 280 F.2d 477, 480-481 (1st Cir.), cert. denied, 364 U.S. 902, 81 S.Ct. 235, 5 L.Ed.2d 195 (1960); Fleming v. A. B. Kirsehbaum Co., 124 F.2d 567, 571-572 (3d Cir. 1941), aff’d sub nom. A. B. Kirschbaum Co. v. Walling, 316 U.S. 517, 62 S.Ct. 1116, 86 L.Ed. 1638 (1942). But cf. Johnson v. Dallas Downtown Dev. Co., 132 F.2d 287 (5th Cir. 1942), cert. denied, 318 U.S. 790, 63 S.Ct. 994, 87 L.Ed. 1156 (1943); Tobin v. Girard Properties, Inc., 206 F.2d 524, 526 (5th Cir. 1953).

In Sunshine Dep’t Stores, supra, the elevator operators, who were also warehouse employees, received, transported and stored shipments of interstate merchandise. The goods were delivered to the company’s warehouse by independent carriers who deposited them at the foot of an elevator. The carriers “approximately 85 or 90 percent of the time” placed the goods on the elevator; the remainder of the time they were so placed by Sunshine’s warehouse employees, some of whom then transported the goods by elevator to the second floor of the warehouse. 292 F.2d at 646. We held that the employees (elevator operators) so handling the goods were engaged in commerce within the meaning of the FLSA. 292 F.2d at 648.

In Kirschbaum, supra, the Third Circuit on facts similar to those of Sunshine Dep’t Stores noted that elevator operators were “directly engaged in commerce for although their activities take place entirely within the state they carry out one step in the actual transportation of the goods to points outside the state.” 124 F.2d at 572 n.5. Accord, Schultz v. Blaustein Industries, Inc., 321 F.Supp. 998, 1008 (D.Md.1971) (“elevator operators * * * who regularly and recurrently carried postmen delivering mail and persons delivering materials moving in interstate commerce * * * were engaged in commerce”); Wirtz v. Columbian Mutual Life Ins. Co., 246 F.Supp. 198, 208 (W.D.Tenn. 1965), affirmed, 380 F.2d 903 (6th Cir. 1967).

Appellant relies primarily on two decisions, one of which is distinguishable from the facts of the present appeal, 10 East 40th Street Building, Inc. v. Callus, 325 U.S. 578, 65 S.Ct. 1227, 89 L.Ed. 1806 (1945), and the other with which we disagree, Houchin v. Thompson, 438 F.2d 927 (6th Cir. 1970). Although the facts in Callus bear some similarity to those of the present appeal, that case is not controlling because the issue there was whether building maintenance employees were, by virtue of the tenants’ activities engaged “in the production of goods for commerce”, and not whether, as here, the employees’ own activities engage them “in commerce.” Since Callus did not consider the question whether elevator operators regularly and frequently carrying interstate mail and freight shipments are themselves engaged in commerce the case is not helpful. We similarly distinguished Callus in our recent decision in Hodgson v. Travis Edwards, Inc., 465 F.2d 1050, 1053-1054 (5th Cir.), cert. denied, 409 U.S. 1076, 93 S.Ct. 685, 34 L.Ed.2d 665 (1972), where we held that the employees of an office building corporation who regularly mailed monthly reports to out of state corporate officers were engaged in commerce or in the production of goods for commerce within the meaning of the Act. 465 F.2d at 1054. We were there persuaded that even though the monthly reports may have had no intrinsic value and were for internal corporate use only, their preparation and subsequent mailing by the office employees were sufficient to meet the Act’s definition of commerce, i. e., “ * * * transportation, transmission, or communication * * *” among the states. And since the activities of the office employees clearly engaged them in commerce, we held that the other building employees, including maintenance personnel, parking lot attendants, and a single maid/elevator operator, were employed in a covered enterprise and thus entitled to the benefits of the Act. 465 F.2d at 1052. If, as in Travis Edwards, the preparation and mailing of monthly reports to corporate directors and officers living out of state engage those sending the reports “in commerce” then, a fortiori, those involved directly in the transportation of the mail (the elevator operators in the instant appeal) are also engaged in commerce.

To the extent that appellant’s other principal case, Houchin v. Thompson, supra, conflicts with our reasoning in Travis Edwards, supra, and because that decision attempts to revitalize the de minimis doctrine in FLSA cases (438 F.2d at 928-929) which has been discredited by the Supreme Court in Maryland v. Wirtz, 392 U.S. 183, 192-193, 88 S.Ct. 2017, 20 L.Ed.2d 1020 (1968), and by this Court in Shultz v. Kip’s Big Boy, Inc., 431 F.2d 530, 535 (5th Cir. 1970), we reject the Sixth Circuit’s rationale in Houchin.

IV.

In keeping with the Act’s remedial and humanitarian purposes, and consistent with the Congressional intent of extending coverage under the Act to the farthest reaches of the channels of interstate commerce, see Jacksonville Paper Co., supra, 317 U.S. at 567-568, 63 S.Ct. 332, the district court correctly, we think, analogized the labor of elevator operators transporting mail and freight to the labor of truck drivers transporting interstate goods between two points in the same state. See Wirtz v. McClure, 333 F.2d 45, 46 (10th Cir. 1964); Jacksonville Paper Co., supra, 317 U.S. at 567, 63 S.Ct. 332. We agree with the district court and the Secretary that both activities satisfy the “transportation” requirement in the Act’s definition of commerce.

In the context of another Fair Labor Standards Act controversy the Supreme Court, per Mr. Justice Harlan, ruled that “the considerable discretion possessed by the Secretary as the one responsible for the actual administration of the Act should not be understressed.” Idaho Sheet Metal Works, Inc. v. Wirtz, 383 U.S. 190, 205, 86 S.Ct. 737, 747, 15 L.Ed.2d 694, reh. denied, 383 U.S. 963, 86 S.Ct. 1219, 16 L.Ed.2d 305 (1966). This Court is guided by that precept for, as in all matters regulated by a Congressionally authorized agency, judicial line-drawing in countless possible industrial and commercial situations should begin with deference to the expertise of the agency or administrator involved, especially in questions pertaining to the labor laws. See Phelps Dodge Corp. v. NLRB, 313 U.S. 177, 194, 61 S.Ct. 845, 85 L.Ed. 1271 (1941); NLRB v. Gissel Packing Co., 395 U.S. 575, 612 n.32, 89 S.Ct. 1918, 23 L.Ed.2d 547 (1969). Having thus considered the relevant case law, Congressional intent, and administrative practicalities, and believing as we do that the FLSA should be given a liberal interpretation, consistent with Congressional intent in favor of finding coverage, we hold that appellant’s elevator operators are engaged in commerce. Since appellant is thereby a covered “enterprise” under the FLSA, the other named employees are also entitled to the minimum wage and overtime benefits of the Act.

The judgment is Affirmed.

      . 29 U.S.C. § 201 et seq., as amended.

      . 29 U.S.C. § 217.

      . 29 U.S.C. § 206(b).

      . 29 U.S.C. § 207(a) (2).

      . 29 U.S.C. § 211(c).

      . The prescribed minimum wage during the years in question was as follows:
      Feb. 1, 1967 to Jan. 31, 1968 $1.00
      Feb. 1, 1968 to Jan. 31, 1969 $1.15
      Feb. 1, 1969 to Jan. 31, 1970 $1.30
      Feb. 1, 1970 to Jan. 31, 1971 $1.45
      29 U.S.C. § 206(b).

      . Section 203(b) provides:
      (b) “Commerce” means trade, commerce, transportation, transmission, or communication among the several States or between any State and any place outside thereof.

      . Section 203 (r) provides, in relevant part:
      (r) “Enterprise” means the related activities performed (either through unified operation or common control) by any person or persons for a common business purpose, and includes all such activities whether performed in one or more establishments or by one or more corporate or other organizational units including departments of an establishment operated through leasing arrangements, but shall not include the related activities performed for such enterprise by an independent contractor: Provided, That, within the meaning of this subsection, a retail or service establishment which is under independent ownership shall not be deemed to be so operated or controlled as to be other than a separate and distinct enterprise by reason of any arrangement, which includes, but is not necessarily limited to, an agreement, (1) that it will sell, or sell only, certain goods specified by a particular manufacturer, distributor, or advertiser, or (2) that it will join with other such establishments in the same industry for the purpose of collective purchasing, or (3) that it will have the exclusive right to sell the goods or use the brand name of a manufacturer, distributor, or advertiser within a specified area, or by reason of the fact it occupies premises leased to it by a person who also leases premises to other retail or service establishments. * * *
      Section 203(s) provides, in relevant part:
      (s) “Enterprise engaged in commerce or in the production of goods for commerce” means an enterprise which has employees engaged in commerce or in the production of goods for commerce, including employees handling, selling, or otherwise working on goods that have been moved in or produced for commerce by any person, and which—
      (1) during the period February 1, 1967, through January 31, 1969, is an enterprise whose annual gross volume of sales made or business done is not less than $500,000 (exclusive of excise taxes at the retail level which are separately stated) or is a gasoline service establishment whose annual gross volume of sales is not less than $250,000 (exclusive of excise taxes at the retail level which are separately stated), and beginning February 1, 1969, is an enterprise whose annual gross volume of sales made or business done is not less than $250,000 (exclusive of excise taxes at the retail level which are separately stated) ; * * *_

      . In Montalvo v. Tower Life Bldg., 426 F.2d 1135, 1143 (5th Cir. 1970) we held that “an employee may be engaged in commerce or in the production of goods for commerce within the meaning of the [FLSA] even though the time he devotes to the interstate activity is small in amount.”

      . 29 U.S.C. § 203 (i) defines goods as follows :
      (i) “Goods” means goods (including ships and marine equipment), wares, products, commodities, merchandise, or articles or subjects of commerce of any character, or any part or ingredient thereof, but does not include goods after their delivery into the actual physical possession of the ultimate consumer thereof other than a producer, manufacturer, or processor thereof.

      . For discussion of the 1961 amendments to the FLSA, which added the “enterprise doctrine” to the Act’s provisions, see Note, 9 B.O.Ind. & Com.L.Rev. 487, 489-90 (1968) ; Note, 41 Notre Dame Lawyer 596, 597-99 (1966).

      . See also, Mitchell v. Sunshine Dep’t Stores, Inc., 292 F.2d 645, 647-649 (5th Cir. 1961) (employees, including elevator operators, handling and storing interstate merchandise at warehouse before distribution to local retail stores held to be engaged in commerce) ; Mitchell v. Royal Baking Co., 219 F.2d 532, 533-534 (5th Cir. 1955) (where we held that various employees handling goods shipped from out of state, including workers unloading and carrying same into warehouse, were engaged in commerce) ; Fleming v. A. B. Kirschbaum Co., 124 F.2d 567, 571-572 (3d Cir. 1941), aff’d sub nom., A. B. Kirschbaum Co. v. Walling, 316 U.S. 517, 62 S.Ct. 1116, 86 L.Ed. 1638 (1942) (elevator operators employed by owner who leased his building to tenants, some of whom manufactured goods shipped interstate, were directly engaged in commerce by carrying in elevators the finished products) ; McComb v. W. E. Wright Co., 168 F.2d 40, 42 (6th Cir.), cert. denied, 335 U.S. 854, 69 S.Ct. 83, 93 L.Ed. 402 (1948) (employees who spent 25% of their time unloading and storing both intrastate and interstate (15% of total) goods engaged in commerce) ; Sucrs. de A. Mayol & Co., Inc. v. Mitchell, 280 F.2d 477, 480-481 (1st Cir.), cert. denied, 364 U.S. 902, 81 S.Ct. 235, 5 L.Ed.2d 195 (1960) (employees, including elevator operators and janitorial personnel, who received and stored goods within warehouse held to be engaged in commerce) ; McComb v. Herlihy, 161 F.2d 568, 570-571 (4th Cir. 1947) ; Clyde v. Broderick, 144 F.2d 348, 351 (10th Cir. 1944).

      . Similarly distinguishable are two of our own past decisions dealing with elevator operators that relied on the Callus decision, Johnson v. Dallas Downtown Dev. Co., 132 F.2d 287 (5th Cir. 1942), and Tobin v. Girard Properties, Inc., 206 F.2d 524 (5th Cir. 1953). Neither case controls the present appeal because in neither case was the issue raised whether elevator operators transporting interstate mail and freight are engaged in commerce. In Johnson the issue was whether six elevator operators whose duties appeared to be limited to carrying passengers up and down the building were engaged in the production of goods for commerce by virtue of the tenants' activities, a question we answered in the negative, 132 F.2d at 289. In Tohin, various employees of an office building owner, including elevator operators, mechanics, janitors, and building maintenance engineers, argued that they were engaged in commerce on the ground that their work in a building 70% occupied by a tenant engaged in interstate commerce, the Southwestern Bell Telephone Co., was “an integral part of the operation of the telephone company’s interstate communication system.” 206 F.2d at 526. After noting that the test for determining whether an employee is engaged in commerce “is not whether the employees’ activities affect or indirectly relate to interstate commerce but whether they are actually in or so closely related to the movement of the commerce as to be a part of it,” 206 F.2d at 527 (emphasis added), and noting that the decision in each case must turn upon its own peculiar facts, id. at 528, we held that the various employees were not engaged in commerce because their activities were too remote from the “in commerce” activities of the tenant telephone company, id. at 527-528. As far as we determine, in Tobin it was neither alleged nor argued that the elevator operators regularly and frequently transported mail and freight deliverymen as part of their regular duties. Since neither Johnson nor Tobin considered that issue, which is the central issue in the present appeal, those two decisions, relying on Callus, are, like the decision in Callus, readily distinguishable.

      . The Court in Houchin stated :
      “Where some inconsequential incident of interstate commerce happens to result from the general conduct of a fundamentally intrastate business, the rule of de minimis is applicable and the Act does not apply.”
      438 F.2d at 928-929 (citation omitted).

      . “The only question for the courts is then whether the class [of employee activities affecting commerce] is ‘within the reach of the federal power.’ The contention that in Commerce Clause cases the courts have power to excise, as trivial, individual instances falling within a rationally defined class of activities has been put entirely to rest.” 392 U.S. at 192-193, 88 S.Ct. at 2022 (citations and footnote omitted).

      . It was argued in Kip’s Big Boy, as it was in Houchin, that the amount of time devoted by the employees to their “commerce” activities was “inconsequential” or only “occasional.” We said, 431 F.2d at 535, that the regularity of the employee doing assigned interstate work which is necessary to the normal operation of the purely intrastate business should determine if the employee is substantially engaged in interstate commerce, not the exact number of hours spent, for if Kip’s Big Boy were not able to receive and store its shrimp, etc. when they were regularly received, it would substantially damage the business. Moreover, this court has held * * * that the provisions of the Act apply to employees who spend one percent of their time in commerce, (footnote, citations omitted, emphasis added to the word “regularity.”)

        See also Montalvo v. Tower Life Bldg., supra note 9.

      . In his Memorandum and Order dated August 14, 1969, the district court said (see Transcript, at 224-25) :
      The court is satisfied that construing section 203 (s) to include defendant’s elevator operators is in accordance with this intent and purpose of the Act. The relationship between these elevator operators and the interstate freight carried in the elevators is interestingly similar to that between truck drivers and their interstate load. In each case the only real relationship between the operator and the load being conveyed is the operation of the means of conveyance involved. And the operator of the motor vehicle is clearly covered by the Act.
      (citations omitted).

      . See note 7 supra.


author: FAIRCHILD, Circuit Judge.

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Terrence Michael KISSANE, Defendant-Appellant.
    No. 71-1711.
    United States Court of Appeals, Seventh Circuit.
    Argued Oct. 17, 1972.
    Decided May 22, 1973.

      William G. Taffe, Chicago, Ill., for defendant-appellant.
    James R. Thompson, U. S. Atty., Stephen J. Cloud, William T. Huyck, Asst. U. S. Attys., Chicago, Ill., for plaintiff-appellee.
    Before DUFFY, Senior Circuit Judge, FAIRCHILD, Circuit Judge, and GRANT, District Judge.

      . District Judge Grant of the Northern District of Indiana is sitting by designation.

   FAIRCHILD, Circuit Judge.

This is an appeal from sentence on conviction of five counts charging activity with methamphetamine hydrochloride, a “depressant or stimulant drug” under 21 U.S.C. § 321 (v) (2). Appellant does not contest the fact that he delivered to Agent Tejan 1 gram of the drug October 28, 1968, another 1.176 grams earlier on October 31, and another 101.87 grams later that day, which he unlawfully manufactured and possessed. In return for the drugs appellant expected Agent Tejan to furnish various chemical raw materials for further manufacture, which were not readily obtainable through ordinary channels.

The issues on appeal relate primarily to appellant’s defense of insanity. After conviction, appellant was provisionally sentenced for study and report, under 18 U.S.C. § 4208(b). Ultimately, appellant was placed on probation for 5 years, with the first 6 months to be spent in residence at the Chicago Community Treatment Center.

The issues and our disposition of them are as follows:

(1) Sufficiency of proof of sanity. Appellant produced substantial proof that he was mentally ill in October, 1967 and at the time of the offenses. The diagnosis by Dr. Gradolph in 1967 was depressive reaction with a manic or hypomanic defense against a psychotic depression. There was also expert testimony which would support a finding that he suffered from amphetamine psychosis, resulting from extended injection of high doses of amphetamine. There was testimony of members of appellant’s family and friends concerning his bizarre behavior and hallucinations, although, under the circumstances, the jury may well have discounted the claims to some degree, and need not have believed that the reported incidents were close in .time to the October, 1968 offenses.

Dr. Gradolph testified in answer to a hypothetical question that the person described must have been suffering from a mental disease; it would not affect his knowledge of the wrongfulness of his acts as much as his ability to act on the basis of the knowledge; he would not have a substantial capacity to conform his conduct to the requirements of the law; his need for the drug would be overwhelming. This and other expert testimony, in combination with testimony supporting the facts assumed in the question, would tend to establish the defense of insanity.

There was, however, testimony that appellant made very high quality methamphetamine hydrochloride; that he learned the sophisticated process by studying chemistry abstracts which he obtained from the library; that he had assembled the required laboratory equipment. Agent Tejan observed appellant for many hours October 28 and 31. The agent observed no bizarre conduct, fatigue, or tremors, and there was no conversation about hallucinations. Appellant talked at length and sensibly about chemistry. He was cautious in his dealings with the agent. The agent did not think appellant was suffering from a mental disease nor lacked capacity to appreciate the wrongfulness of his acts or to conform his conduct to the requirements of the law.

The jury heard appellant testify quite vaguely about his ventures in business, where he obtained the money he needed, and the transactions he had had involving chemicals and drugs. Within reasonable limits, the jury could decide for itself whether this was deliberate prevarication or a manifestation of illness. His testimony indicated he knew there were laws against drugs, based on .the fact that people sometimes steal and commit violent acts to obtain drugs, but that he felt they did not apply here because he was not hurting anybody.

Appellant testified that a month or so before the event, he abstained from amphetamines for as long as a week. On that hypothesis, Dr. Parzen, called by the government, testified that the degree of dependence was negligible. Dr. Gradolph testified that on that basis he would not be sure the need was irresistible. Dr. Gradolph also testified that appellant might have been able to cease manufacturing the drug, but not the use of it. Assuming rational negotiation concerning the exchange of chemicals for the drug, Dr. Parzen thought appellant could tell the difference between right and wrong, and could conform his conduct in general to the law, although he might not be able to conform to the law against drugs.

“[I]n view of the complicated nature of the decision to be made — intertwining moral, legal, and medical judgments — it will require an unusually strong showing to induce us to reverse a conviction because the judge left the critical issue of criminal responsibility with the jury.” King v. United States, 125 U.S.App.D.C. 318, 372 F.2d 383, 389 (1966); Gaskins v. United States, 133 U.S.App.D.C. 288, 410 F.2d 987, 991 (1967).

We think the evidence presented a jury question on the defense of insanity, and are unable to say that “reasonable men must necessarily possess a reasonable doubt as to defendant’s sanity.” See United States v. Westerhausen, 283 F.2d 844, 852 (7th Cir., 1960).

(2) Admission of a recent conviction of felony. On cross-examination of appellant, the government brought out, over objection, that on July 6, 1970 appellant pleaded guilty to “bailjump-ing” (18 U.S.C. § 3150). It seems conceded that the circumstances made it a felony. Appellant argues that the district court abused its discretion. Appellant relies on our language in United States v. McCarthy, 445 F.2d 587, 591 (7th Cir., 1971), that the Proposed Rules of Evidence be used as guidelines, and on (3) of Rule 609(a) of the 1971 Revised Draft, 51 F.R.D. 315, 391. Under (3) a prior conviction was not to be admitted if “the judge determines that the probative value of the evidence of the crime is substantially outweighed by the danger of unfair prejudice.” (3), however, does not appear in Rule 609(a) in the form prescribed by the Supreme Court November 20, 1972, and transmitted to Congress. The effectiveness of the Rules so transmitted is suspended pending legislative approval. P.L. 93-12, March 30, 1973, 87 Stat. 9. But even if the district court had the discretion described in (3), we could not say it was abused here.

(3) Exclusion of evidence of mental condition in 1970. The criminal activity occurred October 28 and 31, 1968; the trial December 9, 1970. The district court excluded evidence of mental condition of appellant during 1970.

One of the excluded items was an order of the U. S. District Court for the Southern District of California, entered March 5, 1970 in a criminal proceeding against appellant. It recited, a finding that appellant was “not capable of understanding the proceedings against him and not able to assist in own defense and presently insane.” Standing alone the brief recitation in the order would be of limited usefulness, and it would be difficult to say that rejection was an abuse of discretion.

Other evidence offered and rejected should, however, have been received, notwithstanding the lapse in time. See United States v. Alden, 476 F.2d 378 (7th Cir., 1973) page 383.

Appellant was examined in October, 1970 by Dr. Boyd, a psychiatrist, and in early December by Dr. Zaks, a psychologist, to whom he was referred by Dr. Boyd. Although these experts answered hypothetical questions, they were not permitted to state nor take into consideration their 1970 diagnoses. Dr. Zaks was not permitted to state his interpretation of the outcome of the tests he administered. The report of Dr. Zaks, accompanying the offer of proof, stated that appellant “is in a state of personality disorganization characterized by a paranoid schizophrenic delusional system”, with signs of possible suicidal tendencies, and recommendations for hospitalization and prolonged psychiatric after care.

It is clear, of course, that the critical dates as of which the jury must determine appellant’s mental condition and capacity were in October, 1968. In this case there were diagnoses of mental illness one year before and two years after, with the criminal activity occurring during the intermediate progression of appellant’s mental illness. We think that under the circumstances shown in this record the appellant had the right to have both sets of diagnoses before the jury, notwithstanding the lapse in time.

We conclude that there must be a new trial. The judgment is reversed and the cause remanded for a new trial.